International Trademark Registration
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When starting a company, one of the main elements that needs to be worked on is the brand. However, several questions about the subject begin to arise after its creation and one of them is how trademark registration works abroad.
As many people know, to have a strong brand, it is important to have specialized and qualified professionals, so that it attracts the right audience, so that it is unique and, of course, so that it can convey the image that the business wants to convey. But this is not enough to ensure its protection from third parties, both in the national and international markets.
It is important to keep in mind that the complete security of a brand’s exclusivity is only guaranteed with the registration of an international brand in each country of interest. You have certainly come across the following questions:
Is my company’s trademark registration guaranteed worldwide?
In which countries around the world do I need to register my trademark?
How do I register a trademark in other countries if I’m in Brazil?
These are just some of the questions that many people ask when it comes to trademark registration. But don’t worry, because in this text you will find all the answers you want. Keep reading and enjoy your reading!
What is international trademark registration?
International trademark registration is a process that was developed to ensure protection for companies’ brands in international territories. This means that, in several countries, your company’s brand will be protected and can never be copied. However, it is important to note that there is no unanimous registration or institute that is responsible for all countries.
So, in short, you will only be able to obtain the rights to your company’s trademark in a given country if you do so individually (country by country) or if the country is part of an agreement with other States, which we will explain in the next topics.
How important is it to register a brand abroad?
Negotiations between Brazilian companies and international partnerships are not new. Organizations of different areas and sizes have been exchanging and negotiating for a long time, and this is not just an advantage for large multinationals in the market.
In this sense, entrepreneurs who want to have a greater presence abroad need to think about the opportunities that trademark registration can guarantee in the medium and long term. Registration is, without a doubt, a major competitive advantage that can help develop an aspect of credibility and security for the brand as a whole.
What are the advantages of registering a trademark internationally?
Although many companies conduct international negotiations, it is noted that the number of Brazilian brands registered abroad is small.
However, it turns out that, in other countries, there may be similar or even identical trademarks, which is why the owners of these foreign trademarks can exercise exclusivity in the following way:
- Stop using the Brazilian company’s brand in international territory;
- Identify and seize products that contain the Brazilian company’s brand;
- Collect compensation for trademark infringement;
- Among other measures
In other words, the advantages of registering a trademark in other countries are completely noticeable, right? Check out some of them:
Legal and commercial protection against misuse by third parties and against piracy;
Greater security for foreign partners;
Mitigation of expansion and foreign operations risks;
Greater agility in the procedures for exporting products to other countries, which in most cases have a very simplified process when the brand of the product is registered in the destination country.
Therefore, it is highly recommended to register the brand in the countries where the respective companies produce, sell, store and transport products, as well as in those where they maintain commercial relations.
What are the main international agreements?
Countries are not obliged to adhere to international agreements. However, if they do so, they are committed to complying with the clauses. Good examples that relate to intellectual property issues are the PCT (Patent Cooperation Treaty) and UPOV (International Convention for the Protection of New Varieties of Plants).
However, when we refer to trademarks, the Paris Convention and the Madrid Protocol are the main treaties that directly address the issue. Let’s take a look.
Paris Convention
This international agreement was created in 1883 and was the first to address industrial property. Today, it has 173 members, but it is worth noting that Brazil was one of the 14 original signatory countries.
This agreement aims to make national legislation on the subject more flexible. The Paris Convention contains principles that must be analyzed by members. Check out each of them:
- Territoriality: when the protection of an industrial property is only valid in the territory of the country that granted it, remembering that the exception is specific regional agreements;
- National treatment: a person resident in a country that is a member of the convention has the same protection, rights and benefits granted by the legislation of another to his industrial property;
- Independence of rights: patents granted in one member country are completely independent of those granted in another country;
- Unionist priority: this is the right of priority in the filing of trademarks or patents when this is done in other member countries.
Madrid Protocol
Well, as you already know, registering a trademark is a very important and necessary decision for companies. Here in Brazil, trademark registration was only valid in the national territory, which means that if your company operated abroad, you would have to file a new registration request in each country. Of course, all of this would generate — in addition to a lot of work — a great cost.
However, at the end of May 2019, the Federal Government approved a measure that ended up facilitating the registration of trademarks abroad. After many years of preparation and negotiations, Brazil finally ratified its accession to the Madrid Protocol with the World Intellectual Property Organization.
This Protocol concerns an international treaty that was signed in 1991 and has been in force since 1998 among the countries that adopted it. Here in Brazil, the treaty came into force on October 2, 2019, through decree 10.033/19.
Each nation has different bureaucratic processes for recognizing a trademark. This ends up causing a delay in the consolidation of the protection of property rights through registration. It is in this context that the Madrid Protocol comes to promote the international application for trademark registration.
But what is it, after all? Well, it is a unified electronic mechanism that depends on just one submission of documents to register trademarks simultaneously in several countries, significantly reducing bureaucracy.
It is important to mention that, in the same way as with registration in national territory, the request for international registration here in the country is made through the INPI (National Institute of Industrial Property), under the rules of Resolution/INPI/PR 247/19.
It is important to remember that the centralization promoted by the Madrid Protocol does not unify the processes to be carried out in each of the countries involved, but rather allows for a single submission of the documentation required for verification of the international registration, which is subject to analysis by each of the signatories for whom the registration is to be made. In other words, it is as if it had been sent directly to the respective administrations.
In addition to making it much easier to register a trademark abroad, another major advantage of Brazil’s accession to the Madrid Protocol is the reduction in the time required to obtain a trademark registration. Not long ago, a registration request would take approximately 2 years to receive a response.
Now, with the accession to the Madrid Protocol, the maximum time between the protocol and the judgment is, obligatorily, up to 18 months. If the request is made via the Madrid Protocol, designating Brazil, if there is no decision within this period of time, it is assumed that the registrability has been granted.
What is the trademark registration procedure like in other parts of the world?
Each country has its own trademark registration procedure. Even those that are part of the Madrid Protocol have their own requirements, i.e. steps that must be followed for trademark analysis, fees charged and other peculiarities.
For this reason, it is essential to know how the process works in some places. Don’t forget that if you register your trademark in one of the signatories of the Madrid Protocol, it also applies to dozens of other countries around the world. See the details for registering in some countries!
United States
In the US, the registration request is made with a “Applicant Basis”, which has four alternatives that differ in terms of the use of the brand in practice. The average time for approval of the registration is 10 months, if there is no objection or opposition from third parties. The validity period is 10 years. Therefore, after this period of time, it is necessary to renew it.
Canada
In Canada, the number of applications will depend on the characteristics of the brand, the scope of protection desired and the budget. When the brand has a distinctive symbol or slogan, for example, it will be necessary to file an application for each one. Remember that the average time to register a trademark in this country is 12 months.
European Union
Trademark protection provided by the EU is fully applicable to all EU member states with just one registration. The average registration time is 6 months and the validity is 10 years, and it must be used within 5 years after registration in the commercial context.
Personalized consultancy for registering a trademark internationally
To register a trademark abroad and not waste time, as the registration process requires care and a lot of attention, the best option is to hire specialized companies to carry out the entire registration process and follow up on the application.
Specialized assistance is essential to complete the registration process correctly. After all, it is necessary to be aware of all legal requirements and carefully analyze all necessary procedures for successful registration.
Count on the support of a good specialized company, such as VILAGE. By doing so, you avoid serious errors in the process. The specialist will monitor the information and take care of all requests for documents that may arise during the process.
There are many advantages to having the process supervised by someone who understands the subject. Check out some of them:
- High chance of having the international registration accepted;
- Quick action in cases of irregularities;
- Structure to monitor the process weekly;
- Guidance and updates during the process.
Frequently Asked Questions
International registration via the Madrid Protocol ensures ease of filing without an intermediary abroad, in just one language, and also collects trademark protection fees in several territories using a single system. In other words, there are several benefits to protecting trademarks abroad via Madrid: ease of controlling deadlines, saving money and time, and security of registration through a single international application.
The Madrid Protocol allows registration in more than 120 countries (China, USA, Australia, Japan, Russia, most European countries, among others) through an extremely simplified procedure.
If you intend to take your company to countries that are not part of the Madrid Protocol, you will need to check the local legislation and apply for registration directly in the destination country. Remember that the documentation must also be translated into the language of the country in order for it to be valid.
To apply for international trademark registration, you just need to be a Brazilian natural or legal person or a resident of Brazil, or have a real and effective commercial or industrial establishment in Brazil. Not to mention that the applicant must be the holder of a registration or application for registration of the national trademark, which will serve as the basis for the international application.
