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  • Writer's pictureLindsay Spiller

Unlocking the Power of International Trademarks: Your Guide to Filing and Protecting Your Brand

Updated: Dec 31

A picture of the phrase "global trademark" with a globe

In today's globalized business landscape, protecting your brand has never been more crucial. Whether you're a small startup or a multinational corporation, safeguarding your hard-earned brand identity is vital to ensure that your efforts aren't wasted or copied by others. This is where international trademarks come into play, offering a robust shield for your brand across borders. At Spiller Law, we understand the significance of trademarks, and in this blog post, we guide you through the process of filing international trademarks and highlight their value.


The Madrid System: A Shield for Your Brand Worldwide


International trademark protection is governed by the Madrid System, which consists of the Madrid Agreement and the Madrid Protocol. By following this system, you can extend your brand's protection to an impressive 122 countries, all committed to mutually safeguarding each other's national trademarks. This alliance of countries is known as the Madrid Union.


What Can Be Protected Under International Trademarks?


The requirements for international trademarks mirror those for national filings. You can protect a wide range of elements that make up your brand identity, including logos, names, images, colors, patterns, shapes, packaging of goods, sounds, and even smells (with specific requirements). A single international trademark can encompass multiple concepts, provided they form a distinctive sign that sets your brand apart from others.


Eligibility for International Trademark Registration


To file for international protection, you must meet one of the following criteria:

  • Be a citizen of a Contracting State to the Madrid System.

  • Be a legal entity residing in a Contracting State.

  • Be a legal entity with a genuine and effective industrial or commercial presence in a Contracting State.

Scope and Duration of IP Protection


An international trademark protects your brand for a period of 10 years. After this timeframe, you can renew your protection, a process we'll delve into later. The number of countries covered by your trademark depends on your initial filing. You can expand this protection by submitting a Territorial Expansion Application later, with associated fees.


How to Apply for an International Trademark


Applying for an international trademark involves several steps:


Step 1: Apply to the Appropriate National Trademark Office


Start by applying to the national trademark office of a Contracting State. They will review your application and, if no issues arise, forward it to the World Intellectual Property Organization (WIPO). This step typically takes up to two months.


Some national offices include:

  • USA: USPTO (United States Patent and Trademark Office)

  • UK: IPO (Intellectual Property Office)

  • Germany: DPMA (Deutsches Patent- und Markenamt)

  • France: INPI (Institut National de la Propriété Industrielle)

  • Spain: OEPM (Oficina Española de Patentes y Marcas)

  • Italy: UIBM (Ufficio Italiano Brevetti e Marchi)


Step 2: Examination by WIPO


Upon approval by the national office, WIPO examines your application to ensure its legitimacy and correctness. If approved, your trademark will be published in WIPO's International Trademark Gazette and forwarded to the national offices of your chosen countries.


Step 3: Examination by National Trademark Offices


Each requested country's national trademark office will review your application for faults and potential conflicts with existing trademarks. They may publish your application in their national gazette and allow other trademark holders to raise concerns. If no conflicts exist, your trademark will be granted, and your brand will be officially protected in that country.


Follow Up: IP Monitoring and Trademark Renewal


Securing an international trademark is not the end of the journey. To protect your brand from potential copycats, establishing an IP monitoring program is essential. Spiller Law has partnered with industry experts to provide you with robust IP monitoring services, ensuring your trademark remains secure.


Additionally, remember that international trademarks are valid for ten years. Once this period expires, you must initiate the renewal process. WIPO and most national trademark offices do not send automatic reminders, so proactive management or hiring a trusted IP lawyer is crucial to avoid disruptions.


Conclusion


Filing for an international trademark is a vital step in safeguarding your brand across borders. However, it's a process that requires careful attention to detail and adherence to international agreements. Mistakes can lead to delays and complications. To navigate this journey smoothly, consider seeking expert guidance from Spiller Law. With our trademark expertise, you can ensure that your brand remains protected, allowing you to focus on what you do best – building and growing your business. Protect your brand, protect your future.


Spiller Law is an advisor to startup businesses, entertainment and media companies, and artists. Feel free to schedule a free consultation.



 

Spiller Law is a San Francisco business, entertainment, and estate planning law firm. We serve clients in the San Francisco Bay Area, Silicon Valley, Los Angeles, and California. Feel free to arrange a free consultation using the Schedule Appointment link on our website. For other questions, call our offices at 415-991-7298.

 

The information provided in this article is for general informational purposes only and should not be construed as legal advice or opinion. Readers are advised to consult with their legal counsel for specific advice.

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