FAQ: Trademarking Your International Business

by Selma Canas | October 9, 2020

Recently we discussed the importance of business owners trademarking their business. It doesn’t matter if a business is local or nationwide, protecting a company’s image by implementing a trademark is key for any business.

Again, when a company applies for a trademark or a service mark, they are protecting that brand and reputation that they spent so much time and effort developing. If a business owner ever sells the company, this trademarked brand becomes an intangible asset to the company, increasing its value.

If the company conducts business internationally, the protection shouldn’t stop at US borders. When a business expands the scope of their target audience, they are also possibly developing a long list of international competitors. This makes protecting the company’s image even more vital.

Some business owners assume that if they have a US trademark that they will be protected internationally. Unfortunately, that is just not true. To gain protection internationally, you have to file for a trademark in every single country in which you conduct business or in which you want protection.

For business owners who are unfamiliar with the trademarking process in general, please read through this article first. For those of you who are already familiar with the trademarking process, but are interested in learning more about trademarking your international business, I have developed a list of frequently asked questions that can help you navigate the process with ease.

Is there a blanket international trademark that covers every country?
The simple answer is no. However, there are a few different treaties that help simplify the process for companies that are located in a participating country that conducts business within one or more of the countries participating in the treaty. One such popular treaty is called the Madrid Protocol.

What does the Madrid Protocol do and how many countries does it cover?
The Madrid Protocol simplifies the international trademarking process by allowing a company to file one application to a single office, in one language (English), with one set of fees, using one currency. Though the Madrid Protocol does not include every country in the world, there are currently 106 participants, and you can find that list here.

How much does the Madrid Protocol cost?
There is a standard fee for the Madrid Protocol trademark (currently $700 per country for which you seek protection), however, the final total will vary based on the needs of the company and how many countries in which it conducts business. To calculate the cost for your company, visit here.

How often do you have to renew the trademark?
You do not have to renew the Madrid Protocol trademark as long as it is in use. If a company pauses service, they may want to double-check and see if the trademark is still valid when they resume international services.

What do I do if I find out a business is using my trademarked logo, name or any other trademarked intellectual property in another country?
Similar to the process in the US, you would have to fight it out in court. You would need to find a lawyer that specializes not only in trademark infringement but also international trademark law, preferably one with knowledge of the particular country in which you are having an issue.

However, if you do not have a trademark in that country, depending on which country it is, the fight may not necessarily go the way you hope. It may be a very lengthy and costly endeavor, which is why it is best to protect yourself as soon as possible in as many places as you can.

Is it worth the fight, if you do not plan on conducting business in that country?
Only you can decide that. There are two ways of thinking regarding this issue. Some may feel it is too expensive to file and maintain copyrights in so many countries and will handle the costs fighting in court as they arise. However, many feel that their brand recognition and reputation are worth paying for the protection early.

So, is trademarking right for every business that participates in international trade?
No, it’s not. If the business is relying heavily on brand recognition then it is important for that business. However, if you decide that brand recognition is not really that important to you and you do not protect yourself, keep in mind that you run the risk of someone coming behind you and stealing your intellectual property. The fight will be harder in another country because their laws may be different.

There are many similarities in US and international trade processes. With a larger target market, there is also a greater opportunity for someone to steal your intellectual property. It may not seem like a big deal in the beginning, but keep in mind, the copycat may have an inferior product, creating an opportunity to tarnish the image of your product and name.

Whether in the US or abroad, your brand is a valuable asset and needs protection.

Here is a list of additional resources to help you with the process:

• Global Brand Database – Before filing for a registration, conduct a search to find out if it’s already taken.
• United States Patent and Trademark Office (USPTO)
• World Intellectual Property Organization (WIPO)
• Madrid Protocol
• Trademark Electronic Application System International (TEASi) Online Filing
• STOPfakes.gov (US Dept of Commerce)