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When should you consider international trademark protection and how does it work?

Your business needs to expand and your business already has registered its trademarks on its business name and all of its product names. Congratulations – your business sounds like a success.

Are you now thinking of moving to international markets? You need to remember to protect your intellectual property in the same fashion that you did here in the United States.

Your trademark registration in the United States Patent and Trademark Office can be moved to foreign countries through the Madrid Protocol. (Currently, Canada does not accept Madrid Protocol filings because Canada needs to update its trademark filing system to be harmonized with world standards.)

The first step should always be to do a trademark search for the countries to make sure that there is not a similar mark registered in similar goods/services already. Even if your mark has priority in the United States, do no assume that your mark will have that priority worldwide or is not taken worldwide. Trademark law has developed in each nation, and business has developed differently in that time, also.

International Intellectual Property

In Europe, The Community Trademark system allows trademark owners to file a single application to afford protection throughout the entire European Union. The application is reviewed by the Office for Harmonization in the Internal Market (OHIM); trademark offices in the individual EU countries are not involved in the examination or registration process.   Interestingly, OHIM will register a trademark without evaluating whether the trademark is likely to conflict with other Community Trademarks or those registered in European Union countries; instead, you and your business are encouraged to monitor Community Trademark applications and to submit an opposition if they object to registration – and do a trademark search to see if there are issues in the country that your business is going to sell in.

In Asia, one must know the countries that are not in the Madrid Protocol and that trademark law may still not yet be harmonized in Asian countries. Hong Kong is not yet ready for the Madrid Protocol. For those with experience, filing in China directly is preferable to filing through the Madrid Protocol. There is no Chinese equivalent to a USPTO office action, no back-and-forth with trademark examiners, and no chance to amend an application that has been filed. China also splits each International Class into subclasses, meaning that your application in the United States may require more work in China. Apple Computer famously ran afoul of the problem when it registered a Class 9 trademark for “IPHONE” in 2002 as covering computer hardware and computer software. Unfortunately for Apple, cell phones were in a different subclass, and in 2004 a Chinese company, Hanwang Technology, registered “I-PHONE” to cover cell phones. Because iPhone was not a famous trademark in China in 2004, Apple had to pay Hanwang for ownership of the trademark in the subclass. China also does not issue its own separate trademark certificate for Madrid Protocol filings, so enforcement may be an issue in China without an official Chinese trademark certificate.

Be aware of the need for help in international waters. The Madrid Protocol system does make filing internationally simple, but there are still going to be differences in the systems for each country.