International Trademark FAQs – Harris Sliwoski LLP

Understanding International Trademark Basics

Protecting your brand internationally is essential to prevent counterfeiting, unauthorized use, and legal conflicts. This Q&A covers key trademark principles, international registration options, enforcement strategies, and practical considerations to help businesses secure and defend their trademarks worldwide.

A. The Basic International Trademark Questions

1. What is a trademark, and why is it important internationally?

A trademark is a symbol, design, word, or phrase legally registered to represent a company or product. Internationally, trademarks distinguish your goods/services in global markets, prevent counterfeiting, and build brand recognition.

2. How do national and international trademarks differ?

A national trademark is valid only within one country. There is no single worldwide trademark, but you can obtain international protection through systems like the Madrid System, which allows registration in multiple countries with one application.

3. What is the “first-to-file” principle, and how does it affect international trademarks?

In many countries, the first person to file a trademark application owns the rights—even if they are not the original brand owner. This makes early filing crucial.

4. What types of trademarks can be protected internationally?

Depending on the country, trademarks may protect words, logos, slogans, designs, sounds, colors, and even scents.

5. What Are The Key Differences in The Major Trademark Systems

United States (Common Law System)

• Based on “first-to-use” principle, giving rights to whoever used the mark first in commerce
• Requires actual use or intent-to-use for registration
• Offers both federal and state registration options
• Registration costs: $250-$350 per class for electronic filing; additional fees for legal representation ($1,000-$2,500)

European Union (EU)

• Single EU Trademark (EUTM) covers all member states
• Uses “first-to-file” principle
• No requirement to show use at registration (but must use within 5 years)
• Registration costs: €850-€1,000 basic fee for one class; online filing discounts available
• Legal representation typically €1,200-€2,500

China

• Strictly “first-to-file” system with no common law protection
• Bad faith trademark squatting is a significant issue
• Registration in both Latin characters and Chinese characters strongly recommended
• Registration costs: $500-$800 per class plus translation fees
• Legal representation typically $1,500-$3,000
• Consider registering with Chinese Customs (additional ¥800 fee)

Japan

• “First-to-file” system with substantive examination
• Written consent may be required from famous people for personal name trademarks
• Registration costs: ¥3,400-¥8,600 per class plus ¥28,200 registration fee
• Legal representation typically ¥150,000-¥300,000

B. International Trademark Registration

5. How can I register my trademark internationally?

You have two options:

• File separate trademark applications in each country where you seek protection.
• Use the Madrid System, which allows you to apply in multiple countries with a single application.

6. What is the Madrid System, and how does it work?

The Madrid System, managed by the World Intellectual Property Organization (WIPO), simplifies international trademark registration by allowing businesses to seek protection in multiple member countries through one centralized application.

7. What are the advantages and disadvantages of using the Madrid System?

Advantages: Cost-effective, streamlined management, and the ability to expand protection later.

Disadvantages: If the basic application (your home-country filing) is canceled within five years, all related international registrations can also be invalidated—this is known as “central attack.”

8. Should I file national trademark applications or use the Madrid System?

It depends on your budget, target markets, and long-term business strategy. The Madrid System is ideal for broad protection, while national applications may provide stronger individual rights in certain countries.

9. How do I determine which countries to register my trademark in?

Prioritize countries where you:

• Conduct business or plan to expand
• Face counterfeiting risks
• Have manufacturing or distribution operations

10. What are “trademark classes,” and why are they important?

Trademarks are categorized into classes (e.g., clothing, software, food) under the Nice Classification system. Choosing the right classes ensures comprehensive protection for your products/services.

11. How long does international trademark registration take?

It varies by country and filing method:

• Madrid System applications: Typically 12-18 months
• National applications: Anywhere from 6 months to several years

Some countries allow opposition periods, where third parties can challenge applications, extending the process.

12. How long does international trademark protection last?

Most trademarks are valid for 10 years and can be renewed indefinitely.

C. Trademark Protection and Enforcement

13. How can I effectively monitor my trademarks internationally?

Effective monitoring requires a multi-faceted approach:

• Conduct regular trademark searches
• Monitor online marketplaces (e.g., Amazon, Alibaba)
• Use trademark watch services
• Work with customs agencies to block counterfeit goods
• Set up Google alerts for your brand names
• Consider periodic market surveys in key regions

14. What are the key strategies for enforcing my trademarks internationally?

Enforcement should be strategic and tailored to each situation:

• Gather evidence of infringement before taking action
• Consider graduated enforcement: start with cease-and-desist letters before litigation
• Customize enforcement by market (more stringent in high-risk regions)
• Register with customs in key markets to prevent counterfeit imports/exports
• Balance enforcement costs against potential harm to your brand
• Develop relationships with local legal counsel in important markets

15. How do I combat digital infringement of my trademarks?

Digital enforcement requires specialized tactics:

• File takedown notices on platforms like Amazon, eBay, and Alibaba
• Use automated brand monitoring tools
• Secure relevant domain names including common misspellings
• Monitor social media for unauthorized use
• Implement strong cybersecurity measures to prevent brand abuse
• Register your brands with major social media platforms’ verification programs
• Use digital watermarks and authentication technologies for online products
• Monitor app stores for unauthorized use of your brand in applications

16. What is “counterfeiting,” and how does it impact brands internationally?

Counterfeiting is the unauthorized production of goods under a brand’s name. It damages brand reputation, confuses consumers, and results in financial losses.

17. What is the UDRP, and how can it help resolve domain name disputes related to my trademark?

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an international process for resolving disputes over domain names that infringe on trademark rights:

• Administered by ICANN-approved dispute resolution providers
• Allows trademark owners to challenge domain names registered in bad faith
• Faster and less expensive than court litigation (typically 2-3 months)
• Requires proving: the domain is identical/confusingly similar to your trademark, the registrant has no legitimate interest, and it was registered in bad faith
• Remedies include transfer or cancellation of the domain
• Applies to most generic top-level domains (gTLDs) and many country-code domains

Legal and Practical Considerations

18. What is a “trademark search,” and why is it essential?

A trademark search checks for existing trademarks before filing to avoid conflicts, legal challenges, and wasted costs.

19. What is the difference between “likelihood of confusion” and “dilution” in trademark law?

Likelihood of confusion: Consumers may mistake one brand for another. Dilution: A famous trademark loses uniqueness due to unauthorized use, even if there’s no direct confusion.

20. How do cultural differences impact international trademark protection?

A name or logo that works well in one country might be offensive, misleading, or legally problematic elsewhere. Research local markets before filing.

21. What is the role of a trademark attorney in international protection?

Trademark attorneys:

• Conduct clearance searches
• File applications & handle legal disputes
• Help enforce trademark rights globally

22. What common mistakes do businesses make when protecting trademarks internationally?

• Failing to conduct a trademark search
• Not registering in key markets
• Neglecting enforcement & monitoring

23. How do international treaties impact trademark protection?

Agreements like the Paris Convention and Madrid Protocol help standardize global trademark laws and make it easier to secure protection across multiple countries.

24. What are the costs of international trademark protection?

Costs include:

• Filing fees (varying from a few hundred to several thousand dollars per country)
• Attorney fees
• Search & enforcement costs
• Total costs very much depend on the country, but typically range from $1500 to $3500.

25. How can small businesses afford international trademark protection?

• Prioritize key markets
• Use the Madrid System strategically
• Consider phased registration over time

26. Why should I keep records of my trademark’s international use?

Maintaining proof of use helps:

• Defend against non-use claims
• Strengthen enforcement actions

27. How do common law and registered trademarks differ internationally?

Common law rights (based on use) exist in some countries but are weaker internationally. Registered trademarks provide stronger legal protection and easier enforcement.

28. How often should I review my international trademark portfolio?

Review at least annually to:

• Ensure it aligns with your business strategy
• Identify new risks and opportunities

29. How do Geographical Indications (GIs) differ from trademarks, and how are they protected internationally?

Geographical Indications differ from standard trademarks in several key ways:

• GIs identify products as originating from a specific geographical region where a particular quality or reputation is attributable to that origin (e.g., Champagne, Scotch whisky)
• Unlike trademarks, GIs typically belong to a group of producers in a region, not a single entity
• Protection varies significantly by jurisdiction:
  • The EU has a comprehensive GI system with Protected Designation of Origin (PDO) and Protected Geographical Indication (PGI)
  • The US primarily protects GIs through certification marks and collective marks
  • The TRIPS Agreement provides minimum standards for GI protection globally
• GIs generally cannot become generic terms in countries that specifically protect them
• Registration processes and enforcement mechanisms differ from standard trademarks
• Many developing countries are increasingly implementing specific GI protection systems

30. What are the key considerations when licensing my trademark to a third party in another country?

When licensing internationally, consider these critical factors:

• Quality control provisions are essential and often legally required to maintain trademark rights
• Define territorial limitations clearly (exclusive vs. non-exclusive rights per region)
• Address language translation issues and how the mark can be adapted for local markets
• Include provisions for compliance with local laws and regulations
• Establish clear guidelines for use on products, packaging, and advertising
• Define dispute resolution mechanisms (arbitration is often preferable to local courts)
• Consider recordation requirements (many jurisdictions require trademark licenses to be recorded)
• Include termination conditions and post-termination rights
• Address ownership of related IP developed during the license term
• Establish reporting requirements to monitor compliance and calculate royalties

31. How are indigenous and traditional knowledge protected through trademark systems?

Indigenous and traditional knowledge present unique intellectual property challenges:

• Many countries now have special provisions for protecting indigenous symbols, designs, and cultural expressions
• Australia’s Indigenous Knowledge IP system allows for protection of Aboriginal and Torres Strait Islander symbols
• New Zealand’s trademark system protects Māori imagery through a special advisory committee
• The World Intellectual Property Organization (WIPO) has developed specific recommendations through its Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore
• Consider collective marks or certification marks for community-owned traditional knowledge
• Some jurisdictions may reject applications that inappropriately use indigenous cultural expressions

Bottom Line: International trademark protection is complex but essential for securing your brand’s global future. Taking proactive steps today can help you avoid costly legal battles and brand erosion down the road.

File early, monitor, and enforce strategically.