International Trademarks

June 26th, 2012

Can you get one trademark registration that gives you full international protection?

The simple answer is no.  Each country or jurisdiction has its own laws or rules regulating trademarks, and in order to gain protection in each of these jurisdictions, one has to register its trademark in every single jurisdiction for complete protection.  This can be incredibly expensive.  However, there are some developments in recent years that have assisted with this process:

Since 1996, a business can apply for a Community Trademark, or CTM, within the European Union.  A registration in one of the EU countries provides protection in all the EU countries, and the cost is equivalent to approximately 3-4 individual registrations.  Therefore if you are intending on carrying on business in several European countries, a CTM mark may be beneficial and economical.  There are other regional trademark treaties as well outside of the EU which may cover several countries.

The second development largely arose in 2003 when the US signed onto an international treated called the Madrid Protocol.  The Madrid Protocol allows a registration to extend to approximately 76 member countries under the World Intellectual Property Organization.  Notably, however, Canada is NOT a member of the Madrid Protocol and therefore this option is not available for most Canadian businesses.

The third tool to assist in international registration is the Paris Convention, which allows signatories to this treaty the ability to recognize foreign registrations of trademarks.  Under the Paris Convention, if a business registers a trademark in one country, then within 6 months registers in a second country, the second country will grant the application a filing date (priority date) equal to the first country’s filing date.

If you are thinking of carrying on business in other countries, or operating an online or e-commerce site, you should consider registering your trademark internationally.  Contact me today to discuss.

Contact

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Port Moody, BC
V3H 0E3

Tel: 604.937.1166
Fax: 604.937.5577

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