Understanding Your International Trademark Rights

Trademark registration is territorial. Therefore, if a trademark has been registered in one country, protection is only granted for this country. Anybody may apply for an identical trademark in another jurisdiction. For this reason it is very important for brand owners to register their trademarks in all the countries and territories in which they believe the trademark may eventually be used.

Can I register a trademark that has already been registered in another country by someone else?

If you are the owner of a trademark and someone has hijacked your trademark by applying for it in another territory, depending on the country, there are actions you may take to either oppose the registration of the trademark if it has not yet been granted or present cancellation actions if the trademark is already registered.

Registering a trademark in over 200 countries is extremely expensive. It is advisable to order a Watch Service in order to monitor whether third parties are registering your trademarks in other countries. This service will allow trademark owners to be notified if identical or significantly similar trademarks are being applied for in other countries or regions of interest.

May I use the ® symbol, if my trademark is registered in another country?

As a general rule, no. Nevertheless, some countries (e.g. USA) allow the use of the symbol if the trademark has been registered in another country. However, the use of the symbol under these circumstances does not grant the holder the protection and recognition they would be entitled to if the trademark was effectively registered locally.

I already have my trademark registered in one country; do I have to register it in others?

Trademarks have territorial validity and grant protection only for the country or territory in which they are registered. If you register a trademark in Japan, the trademark is only protected and recognized in Japan. If a trademark is registered in South Africa, the registration is only effective in South Africa.

You must register a trademark in every country in which you wish the trademark to be protected. Registration should be done not only in the countries that are your current market of interest, but also in the countries that you believe may be potentially important for your business.

Nevertheless, through certain regional trademark offices a single registration will grant protection in multiple countries or territories. These offices are:

BENELUX – Registration through this office grants protection in Belgium, The Netherlands and Luxembourg.

EUIPO/European Union Trademark – Registration through the European Union Intellectual Property Office (EUIPO) grants trademark protection in all 28 member states of the European Union. Therefore, a single registration would grant protection in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

OAPI – Registration through the Organisation Africaine de la Propiete Intellectuelle grants trademark protection in 11 French-speaking African countries, including: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire (Ivory Coast), Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo.