The protection of trademarks via registration has long been accepted internationally. In most countries, rights are initially secured by registration and maintained by later use in the country. Generally speaking, use without registration does not provide trademark protection. Only the United States and a few other nations require use of the mark before registration (e.g., Canada and the Philippines) or give some priority of rights based solely on use (e.g., in addition to the United States, common law countries such as Australia, Canada and the United Kingdom).
It is possible to file a trademark application in the United States on the basis of "intent to use," but actual use of the mark must occur before the registration is issued. The sole exception to this actual use requirement is that a foreign applicant relying on Paris Convention rights may obtain a registration without actual use of the mark.
With few exceptions, the three most notable of which are the European Community Trademark, the Madrid Agreement and the Madrid Protocol, discussed below, trademarks are protected on a country-by-country basis only. The lead time from application to registration varies by jurisdiction from a few months to several years. While some countries examine the existing registry for potentially conflicting prior registrations (e.g., the United States), others do not (e.g., Germany, France and Switzerland), leaving it to the registrants to identify and resolve such conflicts.
Under the Paris Convention for the Protection of Industrial Property, which has been signed by more than 170 countries, a trademark owner may have trademark rights "backdated" in a foreign country to the date of initial filing in its home country if application is made in another treaty country within six months of filing in the home country. Because the United States is a signatory to this agreement, timely Paris Convention filings may help protect new U.S. trademarks from pirates who register trademarks abroad and then attempt to sell them back to the true owners.
A current list of Paris Convention member countries is available on the WIPO Web site.
Anyone can obtain protection in all member countries of the EU with a single application filed with the CTM office in Alicante, Spain. Successfully obtaining a CTM registration typically results in significant cost savings compared to filing individual country applications. However, should the application encounter difficulties during examination or be successfully opposed by a challenger and the applicant chooses to convert the CTM application to individual country applications, the costs likely would be significantly higher than if the applicant had filed the individual country applications initially.
In November 2003, the United States joined the Madrid Protocol. Under the Protocol, a national of a member country that owns either an application or registration for a trademark in its home country, may file a single application with the World International Property Organization (WIPO), also referred to as the International Bureau, and extend its rights in the mark to any other country that is a member of the Protocol. Under the proper circumstances, the savings in filing and renewal fees compared to national registrations could be up to 50%.
A current list of Madrid Protocol member countries is available on the WIPO Web site.
The Madrid Agreement is the third major exception to the need for registration on a country-by-country basis. Under this convention, to which the United States is not a party, once a national of a member country has registered a trademark in its home country, the trademark may be registered in all member countries by filing a single trademark application that ultimately would be filed with the International Bureau in Geneva, Switzerland. Nationals of countries that are not members of this convention may not obtain such "international registrations" unless they have a "real and effective industrial or commercial" establishment in, are domiciled in or are a national of a member country through which they can obtain the necessary home country registration.
A current list of Madrid Agreement member jurisdictions is available on the WIPO Web site.
