How to register a trademark internationally

Clients often ask us the most important question: “How can I register my Trademark renewal internationally?”
Contrary to popular belief a trademark registration can be done in multiple countries. Each country has its own sovereign, and each one requires its own trademark registration. Every country, no matter how large or small, will examine your application to register your trademark. This exception only applies to trademark registration in all EU countries.
How do I register my trademark internationally?
Two ways are available to file your trademark international registration applications. The Madrid Protocol allows you to register your trademark internationally. You can also hire an attorney in each country where you want rights, and have that attorney file the application.
1. 1.
Madrid Protocol was developed by several countries to ease international trademark filings. The Madrid Protocol makes it easier to submit a standard application than to hire a local attorney for each country.
The Protocol allows a business owner to submit one application to the World Intellectual Property Organization (“WIPO”) with each country in which they wish to obtain the rights. The application is then submitted to all the countries concerned for their respective reviews. If your trademark is refused in any country, you’ll need to hire a local attorney to address the refusal.
Filing through the Madrid Protocol can save you money because you don’t need to hire a local attorney to file each application. But it is not a perfect solution for getting your trademark to everywhere you want. Applicants for trademarks will need to hire local counsel to reply to refusals from certain countries.
However, you will need to base your international applications on a Madrid Protocol application or registration. The USPTO may deny your US trademark application. This assumes that the US is your home country. It will also reject all the other international applications. Your Madrid Protocol application will be unable to proceed unless your US application is registered and maintained.
2. In individual countries, it is possible to hire local counsel
Due to the link between your “homecountry” trademark application and your Madrid Protocol applications, it is often advantageous to simply hire local counsel to file your applications in other nations. You are not bound to what happens with the application in your country.
Our firm may decide not to file the US application if it has completed a clearance search for a US-based client. Instead, we recommend to the client to engage local counsel in the desired countries to make additional trademark filings in those countries. This is not through the Protocol. While it might be more expensive, we don’t need to worry if anything happens to the US trademark. The trademarks in the other countries will not be tied to the US applications and will be considered on its merits.
It may sound complicated to hire multiple attorneys all around the world. However, hiring an experienced trademark lawyer firm (such ours) will allow you to establish relationships with local counsel throughout the world. We’re constantly traveling and working in these countries.
International trademark registration is not possible in one way. To acquire rights, we must visit each country. You can do this in one of two ways. The Madrid Protocol is one way. Another option is to file with the local counsel of each country. Please feel free to contact us if you have further questions regarding your trademark or situation.