Foreign trademark registration options

Trademark rights are territorial. Your US trademark registration does not provide you with rights in foreign countries. You can apply for trademark registration in foreign countries through two routes:

  1. filing a single Madrid Protocol for all Madrid member countries, or
  2. filing an individual trademark application separately in each desired foreign country or region.

What is the Madrid Protocol?

The Madrid Protocol application can be a cost-effective one-stop shop for international trademark registration, especially if you pursue several countries. Here’s the list of member Madrid countries.

One potential drawback of a Madrid filing is that the international registration is tied to the US application (“base application”) for the first five years. So, if the US application is abandoned during the first five years after the International Registration date, then the Madrid application will also be abandoned in the designated foreign countries. This will not be an issue if the US application matures into a registration since the next renewal (post-registration maintenance) of the US registration will not be due until the 6-year anniversary of the US registration date.

How to register trademarks by direct filing in foreign countries

The second option of individual filings is the only option available for non-member countries like Canada and Taiwan (as of the date of this post). Direct filings make sense if you’re interested in only a limited number of countries since the cost savings of a Madrid application will be less significant.

Furthermore, each country’s IP office will have their particular rules and preferences concerning the identification of goods and services. By using experienced local trademark counsel, you may save some time and expense in the long run by avoiding rejections due to unacceptable product descriptions.

What is the deadline for filing foreign trademark applications?

A foreign trademark application filed within six months of the filing date of your U.S. trademark application can benefit from a “priority claim” to your earlier U.S. filing date. After six months, you can still file in foreign countries, but without the priority claim.

Can you file foreign trademark applications after 6 months?

Yes, you can file foreign after 6 months without the priority claim. So any foreign trademark applications filed after 6 months will not get the benefit of your earlier US filing date.

Can a single trademark application cover all EU countries?

You can file a single trademark application with the EUIPO to cover all European Union countries. Since the UK is not included in this EU-wide filing, you would have to file a separate UK trademark application.

Need to file a foreign trademark application?

Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help obtain international trademark protection.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com