Ins and Outs of International Trademark Protection

by | Oct 31, 2023 | Trademark

Do You Need International Trademark Protection? How Can You Obtain It?

Trademarks protect brands, which are generally a company’s biggest growing asset. Think about why Bose® Headphones sell more than XYZ Headphones, all things being equal. Bose is an excellent brand because by merely hearing/reading Bose, consumers in the know understand the quality and value of their mobile audio products.

We specialize in protecting brands in part by working with clients on the filings for formal trademark protection at the U.S. Patent and Trademark Office (USPTO). A formal registration gives the registrant exclusivity to use that brand in the U.S. The U.S. is the biggest consumer of practically everything, and we stay very busy. But as the U.S. Supreme Court recently reaffirmed, USPTO registration is only for the goods or services offered in the U.S. So how do you determine if you need international trademark protection?

  • Does Your Brand Cross Borders?

Most brands we have worked with have perhaps unbeknownst nexuses both inside and outside the U.S. For example, a pet food brand fulfilling an order in Vancouver, BC, through Amazon. International. A U.S. company with a Shopify presence in the U.K. International. A business coach who services Asian clients. International.

The Mechanics of Cross-Border Protection

  • The Madrid Protocol

The Madrid Protocol allows filings through a single application. It provides a streamlined process for applying in numerous countries. The complexity of the application process can introduce hurdles, especially when multiple trademark filings are connected rather than independent of one another. By linking registrations in various countries together, applicants run the risk of blanket rejections.

  • The Paris Convention

For applicants using the Paris Convention to file for international trademark protection, each individual application is separate, meaning blanket rejections are not a concern. However, this method can be more labor-intensive and time-consuming. The Paris Convention allows applicants to receive priority treatment for registrations in other countries as long as each application is filed within six months or one year of the first.

  • Benefits of International Registration

Regardless of the applicant’s chosen method, registering internationally benefits multinational companies tremendously. In addition to the apparent advantage of having legal protection against infringement, other aspects of international registration are helpful to businesses. Building brand recognition is vital to business growth and success. A protected trademark offers numerous expansion opportunities.

International trademark registration also removes some of the risks of operating online. E-commerce is a booming industry, and businesses of all sizes can get involved in this market. Exposure online also increases the likelihood that intellectual property will be stolen or copied, so safeguarding these assets is necessary. Small merchants, medium-sized companies, and large corporations can all take the proactive step of registering for international trademark protection in an effort to protect their vital brand identity.

  • Want To Learn More About International Protection Or Entrust An Attorney?

If your business needs international trademark protection, you need an IP attorney well-versed in the Madrid Protocol and the Paris Convention. EmergeCounsel has extensive experience assisting clients with international registration. Contact us for a free consultation.


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