An international trademark application filing program can be a very expensive undertaking. As a general rule, the costs associated with a filing program are on a per mark/per class basis and include the government filing fee, a foreign associate=s fees for the preparation, filing, and prosecution of each application, as well as our fees in working with the client to gather the necessary information, instructing associates, and coordinating the process. Because of the expense involved and the desirability of allocating resources wisely, we work closely with clients to identify and prioritize the marks, countries, and classes that make sense for each client. This process of identification and prioritization includes consideration of a number of different questions and issues.
There are two basic reasons to register a mark in a particular country. The first is to establish ownership of that mark and thereby enable the registrant to control use of the mark, police infringements, and take advantage of the benefits that accrue to the owner of a mark. This first reason is often referred to as the offensive basis for registration. The second is to prevent others from acquiring rights in your mark and thereby gaining the ability to interfere with your use and enjoyment of your mark in that country. This is a defensive rationale for registration. In most countries ownership of a mark is established by registration and not use of a mark and therefore preventing the registration of an important mark by others in key countries can be of significant importance even if you do not intend to actively use your mark in those countries.
Due to the costs associated with the filing of applications overseas, it is generally not realistic to file applications for every mark in every country that one might identify for offensive and defensive registration purposes. Thus, the next step is to prioritize the filings. The first priority is countries where you are currently using the mark at issue, or are likely to begin using the mark within the next twelve to twenty four months, as well as countries that have been identified as critical for defensive purposes, such as where your goods are manufactured or countries that have reputations for trademark piracy. The second priority is countries where you are likely to use the mark within the next five years, and the third priority is countries where you have a reasonably good chance of using the mark at some indeterminate time in the future. If you have unlimited resources to devote to an international filing program, then filing in all the countries identified in the three levels of priority may be appropriate. Where resources are limited, it is best to direct the available resources to the first priority countries and address the second priority countries as resources may allow.
Once your priorities have been determined, you can then evaluate your filing options. Generally, this presents a choice between one or more of the following:
Filing individual national applications is necessary in countries that are not members of the EU or Madrid Protocol, such as Canada, Hong Kong, Taiwan, and most Latin American countries. In addition, one or two individual national filings can be less expensive than a CTM or Madrid Protocol application, so these options need to be weighed on a case-by-case basis.
Filing a CTM application offers protection throughout the EU with the filing of a single application. The costs savings are significant: protection in twenty eight countries for roughly the same price as filing two national applications. The CTM application also offers the advantages of
A Madrid Protocol application is like a bundle of national applications: one application is filed designating as many member countries as the applicant chooses, whereupon the application is disseminated to the Trademark Offices of each of the designated countries for review and approval. A Madrid Protocol application is often the least expensive way to file because there is no need to retain local counsel in each country and many of the official filing fees are reduced. Additional advantages include:
A primary disadvantage of a Madrid Protocol International Registration is the fact that the registration is based upon and linked to a home application or registration of the applicant (an application or registration obtained in the applicant’s home country). This link makes the International Registration vulnerable to central attack, whereby if the home application or registration is abandoned or cancelled within five years, the International Registration with all of the designated countries will also be cancelled. (There are provisions, however, for converting a cancelled registration into individual country registrations should the need arise.) A second principal disadvantage of a Madrid Protocol application is that the goods or services recited in the application must correspond to the goods or services recited in the home application/registration. For Madrid Protocol applications based on U.S. applications or registrations this requirement will narrow the scope of protection because the U.S. only permits the recitation of goods or services that are associated with the actual use of the mark, whereas most other countries permit much broader recitations without a requirement that the mark be used on or in connection with the recited goods or services. Thus, the goods or services recited in an International Registration based upon a U.S. registration will be much narrower in scope than an International Registration that is based upon a registration from most any other country.
With a few notable exceptions such as Canada and the European Union, the charges associated with the filing of an application are on a per class basis and therefore it is important to consider which classes to claim in each country. Generally a client can identify one or two core classes that provide adequate protection without having to register in every class that its goods or services might touch upon. The core class(es) can be identified by considering what products and services using the mark at issue will be sold or offered in each country. Alternatively, the question can be turned around and consideration given to the classes that, if not available to the client due to the registration of another, would cause significant harm or inconvenience to the client.
With the foregoing considerations in mind, the questions that a business must ask of itself in formulating an international filing program include:
Please give us a call if you have any questions or wish to discuss the specifics of your international trademark application filing program.