Trademark rights throughout the world are territorial. In other words, if you want trademark protection in any particular country, you must seek specific protection in that country. Most countries throughout the world, including most European countries, grant trademark rights to the first one to register the mark. Other countries, such as the United States, Australia and the United Kingdom recognize “common law” or unregistered trademark rights.
Trademark rights may be secured throughout the European Union by filing a Community Trademark (“CTM”). In other words, even though you may only be using the trademark in France and Germany, your CTM would cover the whole EU. Thus, CTM registrations are extremely cost effective since trademark owners do not have to register the mark in each individual EU member country.
The CTM Office has different rules regarding allowance of Community Trademarks than the United States. The CTM Office only reviews trademark application on “absolute grounds,” but not “relative grounds.” In other words, the CTM Office will review the trademark application to confirm the trademark is inherently distinctive and not merely descriptive (absolute grounds), but will not refuse registration based on a prior CTM registration (relative grounds). Under the CTM system, a registrant must oppose any subsequently filed mark to prevent registration. Consequently, for CTM applications that are comprised of relatively weak marks, the risk of opposition by prior registrant increases.
The United States, as well as many foreign jurisdictions, are members to the Madrid Protocol. The Madrid Protocol offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office and then filing Requests for Extension to each Madrid Protocol member country.
An International Registration is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Trademark Office. The Madrid Protocol also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. Further countries may be designated subsequently.
For United States applicants, there are many benefits, but also some serious drawbacks to filing under the Madrid Protocol. The major caveat is what’s called “central attack.” Because International Registrations are based on the home country application, in the event the U.S. application does not register, the whole International Registration fails. Further, because the United States requires Declarations of Continuous Use between the 5th and 6th year after registration, as well as during each renewal period, in the event the mark is not used in the United States, the U.S. registration will cancel and thus cancel the whole International Registration.
If you require assistance in registering any mark outside the United States, such as in the European Union, Canada, Mexico, China, Japan and Australia, please Contact Us. TrademarkAuthority have an excellent network of foreign trademark associates that will assist in registering any trademark at reasonable cost.
TrademarkAuthority is a service exclusively licensed to Pearl Cohen Zedek Latzer Baratz LLP ("Pearl Cohen"), an intellectual property law firm located in New York, NY, that provides personal and expert trademark and copyright legal services covering the U.S., Europe, Canada, Australia, Mexico, Japan, China and many other countries throughout the world. This Web site may be considered Attorney Advertising. The information provided on this site is not legal advice, but general information on legal issues relating to trademark searching and registration. Prior results do not guarantee a similar outcome.
TrademarkAuthority was founded by an expert trademark attorney and former U.S. Trademark Office Examining Attorney who has over twenty-two years experience representing clients on a variety of trademark and copyright law issues. Our legal services include trademark searching, filing trademark applications, responding to USPTO Office Actions, filing Statements of Use, representing clients before the U.S. Trademark Office, Federal and State courts, maintaining trademark registrations, monitoring, policing and enforcing trademark rights and filing copyright registrations.