Registering trademarks abroad

The philosopher Diogenes from ancient Greece famously proclaimed, “I am a citizen of the world,” a sentiment that has echoed throughout the ages and resounds in our 21st-century global village.
Your company is a citizen of the world, and your trademark conveys an important message to the world. Many U.S. companies assume because they use and perhaps have registered their mark in the U.S. they have the right to use their mark to convey their message in other countries.
Not so. That’s the bad news.
The good news is that you can acquire trademark rights outside the U.S. with relative ease by following a plan and leveraging supranational filing systems that enable you to apply for trademark registration in multiple countries by means of a single application.

Preliminary steps
The first step is to source trademark expertise at the outset. This is important with any trademark work but is especially so in the context of international trademark work. That expertise may be in-house counsel, outside counsel, or a combination of the two.
Next, establish a budget. Most foreign law firms offer flat fees, and it is possible to get a quote for the total cost of a registration, excluding the cost to resolve substantive issues that arise, if any. Experienced trademark counsel can assist with budgeting, and with identifying good local counsel in your target jurisdictions.
Then, clear the mark for use and registration. Trademark searches can be customized by country or region, as well as in other ways. If your list of target countries includes non-English-speaking countries, connotation analysis may be required. Finally, get a written opinion. This will be important if your mark is ever challenged.

Identify and prioritize marks and countries
You cannot register everything everywhere, so it is important to prioritize which marks to register and where. Identify one or two primary marks and begin by building your international trademark portfolio around them.
There are over 200 countries and jurisdictions in which you could register your trademark, but registering in every country is neither financially feasible nor necessary. Countries in which you are selling product should, as you would expect, be at the top of your list. Consider, too, your company trade name.
In most countries, trademark rights are based solely on registration (your unregistered use in that country and any use outside that country is often irrelevant), so plan to file early to reduce the risk of a third party filing your mark or a similar mark before you.

Register in the U.S. to establish rights ‘nationwide’
The cornerstone of an international trademark portfolio typically is a domestic trademark application or registration. Registration on the Principal Register provides you with several advantages, one of which is a legal presumption of your exclusive right to use the mark nationwide on or in connection with the goods and/or services identified in the registration.

Leverage supranational filing systems
Trademark applicants have four supranational filing systems from which to choose: (1) Community Trade Mark (CTM) (effective in the European Union); (2) International Application (IA) (effective in 70 jurisdictions); (3) ARIPO; and (4) OAPA (Both ARIPO and OAPA are effective in different regions of Africa). These filing systems can save time and money.
The Community Trade Mark (CTM). A CTM application is a single application which upon registration is effective in all 27 member states of the EU. The cost of retaining local counsel to prosecute a CTM to registration, assuming the mark is inherently registrable and no third party opposes the application, is approximately $4,000, or about $150 per country.
It is an “all or nothing” system in the sense you cannot pick and choose among the EU member states in which you want to register.
A corporate applicant can represent itself before the EU trademark office if it has in the EU its principal place of business, or a real and effective industrial or commercial establishment. Otherwise, it will need to retain EU trademark counsel. The applicant need not own a U.S. or other application or registration for a given mark in order to apply for that mark in the E.U.
Applications are examined by the Office for the Harmonization of Internal Markets (OHIM), which reviews applications as to form and inherent registrability (absolute grounds), but not for likelihood of confusion with prior pending or registered marks (relevant grounds).
Instead, prior to the opposition period, the OHIM forwards its search results to the applicant and to proprietors of the CTMs (but not of earlier national rights) listed in those results.
If the CTM is successfully challenged by a third party, the applicant may convert the CTM application to national applications in each of the EU countries in which it wishes to continue to pursue registration. If the CTM application matures to registration, it is valid for 10 years from the filing date, but is vulnerable to attack if it is not used for any period of five years from the date of registration.
The International Application (IA). Like the CTM, an IA is a single application. But the IA (and the International Registration) is otherwise quite different from the CTM.
For example, the applicant can pick and choose from among the 70 countries and intergovernmental organizations that are parties to the Madrid Protocol. The cost to file an IA depends on the number of countries, and which countries are designated by the applicant.
In addition, a U.S. applicant files an IA through the PTO. There is no need to retain foreign counsel to prepare and file an IA, which saves money at the filing stage. If issues were to arise during prosecution it would likely be necessary to engage local counsel at that point, but otherwise you don’t need to retain foreign counsel.
There are other positive attributes of the International Registration (IR), as well. For example, a single IR means a single renewal. In addition, trademark owners can designate additional countries at a later date, and protection in those newly-designated countries would renew at the same time as that for the originally-designated countries.
A principal drawback to the IR is that it must be based on an application or registration in the trademark office of the applicant’s country of origin and for the first five years from the date on which the IR is filed the IR is “dependent” on the basic application or registration. This means whatever happens to the basic application or registration also happens to the IR.
If the basic application or registration fails for either voluntary reasons (e.g., the applicant withdraws the application), or involuntarily reasons (e.g., the applicant is denied by the trademark office or successfully challenged by a third party, known as “central attack”), the IR fails. The IR applicant may then “transform” the IR into national applications within three months, so transformation is not fatal. But it can be costly, both at that time, during prosecution, and for maintenance purposes.
ARIPO and OAPI. The members of ARIPO and OAPI represent about 70 percent of sub-Saharan African countries. The two systems are significantly different in nature. OAPI is the only industrial property authority for its member states, while ARIPO member states have maintained national systems.
ARIPO (African Regional Intellectual Property Organization) was founded in 1977 by English-speaking African countries to facilitate the harmonization and development of industrial property laws. The Banjul Protocol on Marks came into force on March 6, 1997. Currently ARIPO has 16 member states, but only eight are contracting parties to Banjul Protocol.
An applicant may file a single application with either the trademark office of a member state or the ARIPO Office in Harare, Zimbabwe, designating some or all of the eight the countries in which protection is desired. The application for protection in a designated country is reviewed by the trademark office in that country. Trademark registrations are valid for 10 years, and may be renewed every 10 years thereafter.
This system is viewed skeptically by some who reason that, because all eight members are common-law countries in which an international agreement can only become part of domestic law when enacted into the national law by the national legislature. Because only Botswana has amended its national legislation to give effect to ARIPO registrations, ARIPO filings in the other seven countries may not have any effect.
OAPI (Organization Africaine de la Proprieté Intélectuelle, or the African Intellectual Property Organization), has its genesis in the Libreville Agreement of 1962. Certain French-speaking African nations established a regional office for filing trademark applications in 1977 at the Convention of Bangui. Trademark protection is available in all 16 OAPI countries.
The applicant files a single application in the Central Office in Yaounde, Cameroon. Like the CTM, the OAPI application is designed for the extension of trademark protection throughout the territory in all 16 countries. The applicant cannot designate only a few OAPI countries.
After the OAPI determines you have met the minimum filing requirements, the application is forwarded to an examiner. If no objections are raised, or if the applicant overcomes all objections, the examiner will approve the mark for a six-month publication period. A registration is initially valid for 20 years, and may be renewed every 10 years.
Thomas F. Dunn, a shareholder of Morse, Barnes-Brown & Pendleton, P.C. (www.mbbp.com), concentrates his practice in intellectual property, with a particular emphasis on trademark, licensing and franchise law. He has extensive experience counseling clients on the selection, clearance, prosecution, maintenance, defense and enforcement of trademarks both domestically and internationally. He can be reached at (781) 622-5930 or [email protected]. Morse, Barnes-Brown & Pendleton provides sophisticated legal services and practical advice to businesses, from technology start-ups to Fortune 1000 companies.