What You Need To Know Before You Register a Trademark Overseas

Register a trademark overseas

Doing business abroad opens up a lot of opportunities for your business. It can mean introducing your product to millions of new customers, but it also leaves you vulnerable to trademark infringement.

It can also be confusing when trying to navigate the trademark process alone.

Here's what you need to know about the trademark process for registering overseas to help keep your trademark safe.

Registering in the United States

Assuming you live in the US, an American trademark is the best place to start. Beginning your trademark at home is the best way to help ensure its safety.

This will also serve as a jumping off point for future registrations. In short, you'll have firmer ground to stand on.

To begin your trademark journey, your trademark application will need to go before the U.S. Patent and Trademark Office.

The U.S. Patent and Trademark Office is an agency in the U.S. Department of Commerce. It is also known by the acronym USPTO.

Maybe you're asking yourself, what is a trademark, exactly?

According to the USPTO, "A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others."

Trademarks are used to prevent confusion in the marketplace. This will not prevent other companies from manufacturing similar goods or selling a similar product or service. However, the knock-off brand will not be able to sell said product under an identical name.

This will help to ensure that your customer is buying the product they intend to and that your name will not be soiled by knock-off companies looking to take advantage of your brand.

Because building a brand is such a painstaking process, it's important to protect the company that you've built.

Having an advocate to explain the intricacies of trademark law can be extremely beneficial. It is important to follow protocols in order to properly prepare your brand for the international stage. 

The Madrid Agreement

The Madrid System is a coalition of countries that can be covered by a single trademark application. This collective group was formed in 1891, under the Madrid agreement.

The numerous countries that have participated in this agreement are referred to as 'Contracting Parties'. These countries range from Australia and Cuba to Germany and Zimbabwe. All participating parties will offer protection for your trademark. 

Applications for trademark protection are offered in English, French, and Spanish. This is an added bonus of the coalition, as filling out contract forms for each individual country, in each country's native language, would be extremely difficult. 

An application for an international trademark may be filed only by a 'natural person' or legal entity. They must have a connection to a Contracting Party under the Madrid Agreement.

This application will be subject to a basic fee, a supplementary fee, and a complementary fee. This will depend on which countries you wish to enforce your trademark in. 

The International Bureau will receive your completed application. Then it will conduct its own examination. This is to ensure your application meets requirements. 

Contracting parties do have the right to refuse a request for a trademark. They must clearly communicate their reasons to the International Bureau. Also, they have no more than 18 months to communicate their intention of refusal. 

The refusal will then be communicated to the hopeful registrant, recorded in the International Register, and finally, published in the Gazette. 

This is not the end of the road, however, for those who have been refused. At that time, potential registrants will be made aware of their option to appeal for review.

Once the applicant has been notified, the subsequent review will be conducted between the refused party and the country issuing the refusal.

All final decisions reached after the appeal will then be communicated to the International Bureau. The Bureau will then record the decision in the International Register and publish the outcome.

Lawyer Up

Experts agree that the trademark process is best undertaken by someone with experience in the field. Having an advocate will help you navigate through the trademark process without added stress.

An advocating party can also help you avoid making mistakes that could lead to an unnecessary appeals process. 

When working with iGERENT, for example, you will be assigned an IP consultant with whom you can request IP services and ask questions. Your personal IP consultant will ensure that your product or company is trademarked properly.

They will also help you avoid any unnecessary fees that can come along with the international trademark process. 

According to The New York Times, "Trademark applicants represented by attorneys are 50% more likely to earn a stamp of approval from the U.S. patent office than those who go at it alone". 

In addition, this advantage was only widened when the applicant ran into obstacles along the way. Having an experienced advocate increased their chances of approval by 68% when appealing an objection.

Why the Trademark Process is Important

Trademark infringement your company's biggest enemy. Trademark infringement means that a guilty party is redirecting your customer base. They will then be introduced to a lower quality product.

This doesn't just mean stealing profits, however, this damage to your customer base can be permanent. This means that customers may make important brand associations with a low-quality product. They may never even get a chance to try the 'real deal'. 

Enforcing your trademark overseas can be difficult without a lawyer. Especially one skilled in an international trademark. Because protocols can vary so much, it is important to have someone who is familiar with the country in which the violation occurred. 

Without expert help, the odds of recovering your brand is a longshot.

So increase your odds, lower unnecessary fees, and give yourself a break. Get a lawyer or advocate with the experience necessary to make the international trademark process an easy one.

Protecting your brand and your company is the most important decision you can make as a leader.


Author: Tirso García, Product Manager @ iGERENT

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