Many US brand owners are unaware that their priceless trademark rights expire at the border with the US. Foreign trademark registration rights must be obtained separately in each territory in order to be protected outside of the US. For Indians who seek to expand their businesses abroad, the same rules apply
In the US, trademark rights are created by obtaining a federal registration with the United States Patent and Trademark Office and are granted through the use of a mark (USPTO).
Additionally, each nation has its own requirements for trademark infringement and eligibility for trademark registration. As a result, companies that have the potential to expand outside of India must actively prepare and get trademark protection in any foreign jurisdictions relevant to their particular applications.
Suggestions for Registering a Trademark Overseas
Register the Trademark in the US First
You should first file for or register your trademark in the US before looking into international trademark protection. It is advantageous since a US registered trademark is quickly accepted worldwide.
Direct trademark application submission is possible through the USPTO website. Additionally, enrolling in the US initially will provide you more convincing justifications for registering elsewhere.
Do Your Due Diligence
It’s important to understand how the local operating system functions if you want to defend your brand abroad.
Spend some time getting acquainted with the trademark laws and guidelines of other nations where you are attempting to register. The WIPO and the International Trade Administration are two more excellent sources of research support.
Apply Under the Madrid System
The Madrid System is a one-stop shop for managing and registering trademarks globally. The Madrid Agreement also allows trademark applicants to submit a single application to get protection for their creation in a number of different nations. Likewise, nations who recognise these international trademarks make constitute the Madrid Union.
By registering an MM2 Form on the WIPO website, which is free, you can request worldwide trademark support or assurance. The US office can then receive a paper copy of your submission.
The Madrid Agreement currently includes 113 nations, including China, France, Australia, Italy, and the European Union.
You can decide to protect your trademark in all 113 countries, or you can pick particular ones. The WIPO charges a processing fee for trademark applications, too. However, it is less expensive than signing up separately in each nation.
The Madrid Agreement does not provide protection for a number of nations, including Saudi Arabia, Canada, and South Africa. Consider consulting an attorney in the nation you wish to register in if you wish to register a trademark in a location not covered by the Madrid Agreement.
Consider Foreign Translations
It is wise to carefully review the translations of words into other languages that you may want to trademark. Verify that the term or slogan you want to use doesn’t have an offensive or ludicrous translation before using it in that nation.
Don’t Delay
It is important to submit trademark registration applications as soon as possible, especially if you want to do short-term business abroad. IKEA and Apple, two well-known brands, have suffered and paid astronomical sums of money as a result of taking their time to register their marks in various nations.
Takeaways and Pitfalls to Avoid
When selecting a trademark, take into consideration worldwide challenges and possible expansion. Owners of trademarks should consider the following, among other things:
- Their most significant potential markets, even if there is no current plan to sell internationally.
- Whether or whether the products will be supplied internationally and traded online.
- Additionally, which nations are most likely to see counterfeit goods and products?
- Where the products are manufactured.
- If you intend to do transient business abroad, it is crucial to submit trademark registration applications as soon as feasible. Because they took their time to register their marks in different countries, well-known firms IKEA and Apple have suffered and spent exorbitant sums of money.
- To ensure that you won’t be prohibited from expanding into or trading in international countries of interest, do searches for foreign trademarks.
- There are numerous advantages to obtaining a Federal Trademark Registration and filing early, so don’t put off registering a US application. A secure filing based on the priority in the US and a lucrative first-use date are two additional benefits of submitting an intent-to-use application.
- To gain priority back to the filing date of the US application, file in another country within six months of registering in the US.
- In accordance with the circumstances, submit the appropriate application in foreign jurisdictions. Consult a knowledgeable trademark lawyer who can explain the state of the world’s trademarks.