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Author
Olga Plyasunova

Trademark attorney

01 June 2021

Best possible ways of trademark registration abroad

If the entrepreneur has decided to start trading in foreign markets, it is important to pay attention to the protection of the trademark in the selected states.

It would be logical to assume that at the initial stage of trade, the trademark will not be widely known in another country, and, consequently, the threat of illegal use will be low. However, the registration process takes more than one month, so it seems justified to apply for registration of the designation immediately after the decision to expand the territory of trade.

For registration of legal protection in a foreign country the right holder may choose one of the following options:

  • File application directly with the office of the country where legal protection is planned.
  • Use the international Madrid system for trademark registration.
  • Use the regional trademark registration system.

To choose the best option, it is worth answering the following questions:

  • Is registration planned in one or more countries?
  • Does the right holder consider it important to maintain the original priority date?
  • Are the states of intended registration parties to regional agreements?

Filing trademark application with the national patent office

If the trademark owner intends to register a trademark in one or two foreign countries, it is advisable to apply directly to the national office of those countries. The trademark owner should use the services of a qualified professional for this purpose. It is worth noting that the requirements to the contents of the documents submitted for registration of a trademark are basically the same: the applicant has to fill in the application form in the official language of the country, provide full information about the trademark and the right holder, as well as pay the fee for expert examination and registration of a visual identity. After the receipt of documents at the office, the application passes all the stages of review, which have to be passed by the application filed by the applicant who is a citizen of this country and the specialists decide on the registration of the trademark or a refusal of such.

Using system for international registration of trademarks

When an entrepreneur plans to distribute goods or services on the territory of three or more different countries, the best option would be to use the Madrid system for international registration of marks. In this case, also with the help of a patent attorney, the right holder submits an application and the related documents. Unlike applying directly with the office, there is no need to apply in each country separately. A person applies for an international registration with his or her national patent office, and the documents are then sent to the International Bureau of the World Intellectual Property Organization (WIPO), which administers the Madrid System.

The WIPO Office formally verifies the application and sends the documents to the designated countries, where the national offices check the trademark for compliance with the conditions of protectability. This procedure streamlines the procedure in many respects:

  • The time for consideration of the application is reduced, as in the national Offices, the application is immediately sent to the stage of substantive examination of the designation.
  • The right holder pays a reduced fee.
  • The applicant submits a single application in one of three languages: English, Spanish or French.
  • The application is checked at several patent offices within the same period of time. Thus, the right holder gets an opportunity to optimize the trademark registration process, because even if the rejection is received at one office, the examination at the office of another state which can take a different decision takes place in the meantime. As a result, within one period of time, the trademark owner will receive a decision on the legality of the trademark of the offices of different countries.

Besides, the use of the Madrid System allows keeping the priority date of the original application, which was filed with Rospatent when registering the trademark in Russia. Perhaps the pros of such a provision are unclear, but for the specialist they are obvious: if a dispute arises over the right to a trademark, the priority date is one of the decisive values.

Trademark registration in countries party to regional agreements

In order to work together in areas of public interest, some states have formed alliances and concluded regional agreements. Such treaties help to optimize and improve the effectiveness of governmental agencies in those areas. The registration and protection of trademarks is undoubtedly one of these areas of activity.

At the moment, we can distinguish the following regional associations of countries aimed at unified registration of trademarks and their protection in the territory of all participating states that are parties to the agreements:

  • EU. Filing an application with the European Union Office for Intellectual Property (EUIPO), which was established by the decision of the merged countries, makes it possible to issue a EU trademark certificate.
  • Benelux. The Benelux Office for Intellectual Property (BOIP) issues a trademark certificate which is valid in the territory of Belgium, the Netherlands and Luxembourg.
  • African countries have set up the Organisation Africaine de la Propriété Intellectuelle (OAPI). OAPI allows the registration of a trademark in one of the 17 member states, including Gabon, Guinea, Mauritania, Congo, Senegal and others.
  • Eurasian Economic Union (EAEU). Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia are planning to create a single trademark, which will be valid throughout the territory of the member states. The agreement on this was signed on February 3, 2020. In this regard, it is worth assuming that in the near future, trademark rights holders will be able to take advantage of the registration of a single trademark valid on the territory of the above-mentioned states.

In order to correctly choose the best way to register a trademark abroad, we offer the following alternatives schematized.

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