Tips for developing an efficient worldwide trademark application filing strategy

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So you’re launching a new product line worldwide. Or maybe you’re rebranding a division of your global business. Or perhaps you’ve recently conducted an audit of your trademark portfolio and noticed several gaps in coverage.

Regardless, you’re ready to file new trademark applications around the world ‒ and we’re sure you want to make these filings as efficient and cost-effective as possible.

One way to keep costs down is to take advantage of trademark application filing systems that cover multiple jurisdictions. These systems allow you to register a trademark in more than one country by filing only a single application.

Here are our top tips for using multinational filing systems to protect your brands worldwide. Happy filing!

  • Looking to protect a trademark in multiple countries in the EU?  Consider filing an application through the European Union Trademark (EUTM) registration system. One EUTM application covers all 27 EU member countries (listed here). Coverage does not include all of Europe, so additional applications will be needed to cover other European countries, such as the UK. Focusing on the Benelux member countries of the EU?  It is possible to file a single Benelux application that will protect a trademark in Benelux, the Netherlands and Luxembourg simultaneously.

    Pro tip: If someone objects to the registration of your application in just one EU member country, then the entire EUTM application could be refused registration. (It might be possible to convert your EUTM application to individual EU member country applications at that point, but doing so can be time-consuming and costly.)

    Because of this risk, consider “doubling up” protection for your trademark by filing an EUTM application and filing individual national applications in the most important EU member countries.

  • Filing new applications in Africa?  Think about using the African Intellectual Property Organization (OAPI) and/or the African Regional Intellectual Property Organization (ARIPO) registration systems. OAPI covers the countries shown here, but it is not possible to register a trademark in any of these countries individually. The member countries of ARIPO are here (but note that some of these countries are members of the patent protocol, and not the trademark protocol).  Unlike OAPI, a trademark owner can file individual applications in each of the ARIPO countries.

    Pro tip: ARIPO trademark registrations are currently effective in only some ARIPO member countries, including Botswana, Malawi, Mozambique, Namibia, São Tomé and Príncipe and Zimbabwe. Unless you’d like to protect your brand in more than one of these countries, it might be a good idea to bypass the ARIPO filing system altogether, and instead file individual trademark applications in the ARIPO member countries where you do business.

  • Protecting your trademark in several countries outside the EU and Africa? You may want to file an international application through the “Madrid Protocol” system. This system allows a trademark owner to file a single international application, based on an application or registration in their home country. The international application can designate multiple jurisdictions. It is also possible to add jurisdictions at a later date.

    Pro tip:  An international registration depends on the home country application or registration for five years. If the home country trademark is refused registration or cancelled, international rights could be lost. (Although you may be able to transform the international registration into individual country registrations, this process is costly.) In addition, if a local trademark office issues a registration refusal in one of the designated countries, you may need to consult local counsel, increasing the overall cost of using this system. We suggest keeping these points in mind when deciding whether to take advantage of the Madrid Protocol system, and which jurisdictions to designate.

  • Don’t forget the Caribbean! If you’re seeking protection for your trademark in the Caribbean, it is possible to cover all the Caribbean Netherlands (Bonaire, St Eustatius and Saba, or the “BES Islands”) with a single filing.

Thanks to Jennifer Colantoni, of Spoor & Fisher, for assistance with this post.

This entry was posted in Brand Management, Brand Protection, Prosecution Outside USA, Trademark, Trademark Portfolio Management, Trademark Prosecution and tagged by .
Date Published: May 18, 2022
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.