A Trademark Registration is territorial in nature, which means you need to file separate applications in each country where you want your trademark to be registered. If you plan to market a product or a brand globally, then it is vital to register your trademarks in each country you will operate in; due to the fact that the party who registers a mark or logo first legally possess it. Hence, a trademark protection in one country does not provide any protection in other countries; for example, an Egyptian trademark registration is only effective in Egypt and will not offer any protection against infringing uses in other countries. Therefore, in our increasingly globalized market, trademark owners must ensure that the goodwill represented by their trademarks is protected in those countries deemed significant enough to warrant protection. Generally, a trademark registration is only valid in the territory controlled by the issuing entity; however, it can be safeguarded internationally via some options for international trademark registration.
Subsequently, we will
provide a brief analysis of the available options for international trademark
protection and some of the benefits of each approach:
National protection is obtained when
a trademark application is filed directly and a registration issues from the
trademark office in the country in which protection is desired. If, for
example, protection is desired in Egypt, then an IP attorney is retained to
file a trademark application at the Egyptian Trademark Office.
§ The Paris Convention:
Under the terms of an international
agreement called the Paris Convention, 178 countries around the world including
Egypt; have all agreed that each will provide a national treatment for the
citizens of each of the member countries for trademark registration purposes.
The Paris Convention also allows an applicant to maintain the filing date of
the original trademark application such as the trademark application filed in
the applicant's home country, when filing a subsequent application in a member
country if that subsequent filing is made within six months of the original
filing, it is called a claiming priority and can be a significant benefit since
establishing the earliest possible filing date reduces the risk that an
interloper will file a similar trademark between the time of the filing of the
initial home country application and any subsequent priority applications; it
also allows an applicant to greatly reduce the initial capital outlay necessary
to file what could be dozens of trademark applications simultaneously by
allowing them to be filed over six months.
The
alternative in some jurisdictions to national protection is obtaining
protection simultaneously in multiple countries; applicants have the option of
using one or more of the several multinational systems depending on the
countries in which protection is wanted; following but not limited to, we will
cite the most popular multinational IP protection treaties:
If protection
is desired in one or more of the 27 countries which are members of the European
Union, then a Community Trademark also known as CTM registration may be the
best choice; the EU Trademark concept originated in 1964 in a draft of the
Convention on European Trademark Law; however, it was not until 1980 that the
first proposal for a regulation dealing with the EU Trade Mark appeared.
Regulation came into effect with Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trademark; a trademark for goods or services
which is registered in accordance with the conditions contained in this
Regulation and in the manner herein provided is hereinafter referred to as a Community
trademark, but it was not until 1 April 1996 that the first CTM applications
were processed and the register began to operate. The EU trademark system is
administered by the European Union Intellectual Property Office (EUIPO), which
is located in Alicante, Spain.
The European
Union has a unified registration system administered through an internal agency
the Office for Harmonization in the Internal Market also known as OHIM, which
allows an applicant to file one trademark application that, if granted, will
provide protection in all 27 countries which are members of the European Union
for a renewable period of 10 years.
A CTM
application has several benefits over filing applications nationally in individual
European countries:
Ø The costs and
fees for the application are a fraction of what would be incurred if a
trademark application was filed in each European Union country.
Ø Use of the
mark subsequent to registration in only one member country is sufficient to
maintain the validity of the registration throughout the European Union.
Ø A CTM
registration can claim priority to an earlier application under the Paris
Convention noted previously but is otherwise independent of that
application/registration.
Another
multinational trademark filing system is the Madrid Protocol also known as the
Madrid System, officially the Madrid system for the international registration
of marks; named after a series of international agreements governing the
international protection of intellectual property, established in 1891,
functions under the Madrid Agreement 1891 and the Madrid Protocol 1989. It is
administered by the International Bureau of the World Intellectual Property
Organization located in Geneva, Switzerland.
The Madrid Protocol
entails several international agreements pursuant to which 126 countries agree
to allow the nationals of any of these countries to file one trademark
application in their home country, pay one set of fees, and then extend that
application to each member country in which protection is desired for a
renewable period of 10 years.
Contrasting to
a CTM registration, a Madrid applicant must identify in which countries an
application is to be filed and pay an additional fee for each country designated.
This system allows an applicant the flexibility and convenience of filing one
application in one language directly from its home country. A single trademark
registration is issued under the Madrid System referred to as an International
Registration and lists each country protected by the registration.
One
significant benefit of a Madrid application aside from the potential cost
savings is the convenience of having one central repository through which
post-registration administration can be conducted. Rather than incurring the
costs to contact each designated country, the registrant can file one central
trademark assignment or renewal and have it applied to each designated country.
It is
important to remember that International Registrations can only be obtained for
countries and regions which have joined the Madrid System. While the Madrid
Protocol clarifies the application process, it has nothing to do with
approvals; those are still founded on a nation-by-nation basis.
Known
collectively as the Benelux Convention on Intellectual Property, which was
signed on 25 February 2005 and entered into force on 1 September 2006. The
Benelux Convention on Intellectual Property replaced the Benelux Convention on
Trade Marks 1962 and the Benelux Convention on Designs 1966. The Benelux Office
for Intellectual Property (BOIP) is the registration office for trademarks and
designs in Belgium, the Netherlands, and Luxembourg. It is the legal successor
of the Benelux Trademarks Office and the Benelux Designs Office. The BOIP is
based at The Hague, Netherlands.
The countries
of Belgium, the Netherlands, and Luxembourg allow a joint trademark application
which provides protection in all three countries. For one fee, and with only
one central examination, protection if granted will be extended to all three
countries for a renewable period of 10 years. This designation can also be used
in conjunction with claiming priority under the Paris Convention, and Benelux
can be designated as a territory in a Madrid System application.
The African
Regional Industrial Property Office (ARIPO) formerly named as African
Regional Industrial Property Organization was established by the Lusaka
Agreement of 1976 and entered into force on 15 February 1978. ARIPO is a
multinational trademark treaty involving many of the English-speaking African
nations. If granted, one centralized ARIPO trademark application/registration
extends protection for a renewable period of 10 years, in the following 21 countries:
·
Botswana;
·
Eswatini;
·
Gambia;
·
Ghana;
·
Kenya;
·
Lesotho;
·
Liberia;
·
Malawi;
·
Mauritius;
·
Mozambique;
·
Namibia;
·
Rwanda;
·
Sao Tome and Principe;
·
Seychelles;
·
Sierra Leone;
·
Somalia (not member of
the Harare Protocol);
·
Sudan;
·
The United Republic of
Tanzania;
·
Uganda;
·
Zambia; and
·
Zimbabwe.
An ARIPO application functions are more like
an International Registration in the sense that an applicant must specifically
designate the African countries in which protection will be sought and an
additional payment is required for each. Further, each designated country will
examine and potentially object to the application through its local trademark
office under local trademark laws and standards. An applicant can also claim
priority under the Paris Convention for an ARIPO application.
Organisation Africaine de la
Propriété Intellectuelle (OAPI) or namely in
English the African Intellectual Property Organization was created by
the Bangui Agreement on March 2, 1977 and came into force on February 8, 1982.
A revised Bangui Agreement came into force on February 28, 2002.
OAPI is the French speaking equivalent of ARIPO in Africa and includes the
primarily French speaking countries of Africa, the current countries
members are:
·
Benin;
·
Burkina Faso;
·
Cameroon;
·
The Central African Republic;
·
Chad;
·
The Comoros;
·
The Congo;
·
Côte d’Ivoire;
·
Equatorial Guinea;
·
Gabon;
·
Guinea;
·
Guinea-Bissau;
·
Mali;
·
Mauritania;
·
The Niger;
·
Senegal; and
·
Togo.
An OAPI
application is more like a CTM application than an International Registration
in the sense that an applicant does not designate each individual country.
Rather, for one fee, protection is automatically extended if granted to all
member countries for a renewable period of 10 years. This is because it is not
currently possible to file national applications in any of these member
countries individually and, therefore, with only one central examining
authority, protection is extended automatically into each country. OAPI registrations
automatically extend to all Member States; it is neither necessary nor possible
to designate individual member states. The decisions issued by a national court
of any member state on the provisions of the OAPI law are binding on all other
member states. As with most other multinational
filings, Paris Convention priority can be designated with an OAPI application
After we have
illustrated some of the basics options of an international trademark portfolio
analysis and have explained briefly its aspects, how do you decide which option(s)
are best for your business is a question that you must ask. Let’s try
summarizing a bit what we have elaborated previously to help you answer this
question.
Because of
the priority granted under the Paris Convention, a filed application can be
used to file corresponding applications in various other countries and
jurisdictions. These other applications will be treated as if filed on the same
day as was in the home country application. Spreading out the costs and fees
associated with filing other applications over the priority period will allow
the applicant to defer the costs over a longer period of time without
sacrificing any protection. Since a number of multinational agreements observe
Paris Convention priority, such as a CTM application, ARIPO, OAPI, and Benelux,
combining both concepts will yield significant cost savings while allowing for
extensive trademark protection with a single priority date. This option may be
ideal for clients who may not be able to settle at one time the costs and fees
associated with a simultaneous worldwide trademark filing. This is also a
better option for companies seeking the broadest protection possible.
Another
option is to file a national application in a Madrid member home country and
subsequently file for an International Registration designating the desired
countries. This strategy is economically efficient for some applicants because
there are 126 countries around the world to which an International Registration
can be extended, including the CTM covering all of the European Union and the
Benelux territories which would be included in a CTM application. This option,
however, can restrict the scope of protection available in each country
designated, since the goods and services in the original home country
application must be used in each designated country. Filing under the CTM or
other options, or filing individual national applications directly, would
provide a broader scope of protection in many jurisdictions. However, a comprehensive
Madrid filing augmented as necessary with regional or national filings may be
well-suited for companies that do not desire a broad scope of protection;
shortly, it depends on the home country application that why an expert advice
is necessary.
In summary,
innovation is increasingly becoming core to business growth. While planning
your overseas expansions, having a good grasp of your intangible assets will
help you determine how best to leverage them in overseas markets. There are
almost as many permutations for international trademark filing strategies as
there are unique client needs, taking into account financing, product launch
dates, and scalability.
At Scutum IP
Law Firm our trademark specialists have the experience and gained enough
knowledge to help design and implement an international strategy that is suitable
to you and tailored to your business needs.
To learn more about how we can
assist and advise you on your International Trademark Protection, do not
hesitate to contact us.
Kindly note that, the
above information is simplified and must not be taken as a definitive statement
of the law or practice.