International Trademark Considerations: Protecting Your Brand Globally

Trademarks Don't Cross Borders Automatically

A US trademark registration protects your brand only in the United States. If you want protection in Europe, Asia, or anywhere else, you need separate registrations. This surprises many founders who assume their USPTO registration provides global coverage.

How International Trademark Law Works

The Territorial Principle

Trademark rights are granted by individual countries (or regions). Each jurisdiction has its own:

• Registration process
• Examination standards
• Classification system (most follow the Nice Classification)
• Enforcement mechanisms

First-to-File vs First-to-Use

• First-to-use (US, Canada, common law countries): Trademark rights begin when you start using the mark in commerce. Registration strengthens but doesn't create rights.
• First-to-file (China, most of Europe, Japan, most of the world): Whoever files first gets the rights, regardless of prior use.

This distinction is critical. In first-to-file countries, someone can register YOUR brand name before you enter the market — and they'll own it.

Paths to International Protection

Option 1: Madrid Protocol (WIPO)

The Madrid Protocol allows you to file a single international application through WIPO (World Intellectual Property Organization) that covers multiple countries.

How it works:

1. File a "base" application with your home country (e.g., USPTO)
2. Submit an international application through WIPO
3. Designate the countries where you want protection
4. Each country examines independently but through a streamlined process

Pros:

• One application, multiple countries
• Cost-effective for covering many jurisdictions
• Managed through a single system

Cons:

• If your base registration is cancelled in the first 5 years, all international registrations fall
• Some countries still require local attorneys
• Not all countries are members

Cost: Base fee of approximately 653 Swiss Francs + per-country fees ($100-300 each)

Covers: 130+ member countries including EU, UK, China, Japan, Australia, India

Option 2: EU Trade Mark (EUTM)

A single registration covering all 27 EU member states through EUIPO.

Pros:

• One registration for the entire EU
• Relatively affordable (€850 for one class)
• Strong enforcement across all member states

Cons:

• If your mark conflicts with a registration in ANY EU country, the whole application can be challenged
• Post-Brexit, no longer covers the UK (separate UK registration needed)

Option 3: Direct National Filing

File directly with each country's trademark office.

Pros:

• Maximum control over each filing
• No dependency on a base registration
• Can tailor strategy per country

Cons:

• Most expensive approach for multiple countries
• Requires local attorneys in most jurisdictions
• Complex to manage

Priority Countries to Consider

Must-File Markets

• China: First-to-file system. If you don't file, someone else will. Trademark squatting is rampant.
• EU (EUTM): Covers 27 countries in one filing. Essential for European expansion.
• UK: Separate from EU post-Brexit. Important for English-speaking markets.

Important Markets

• Japan: First-to-file. Large consumer market.
• South Korea: Growing market, first-to-file.
• India: Large market, first-to-use system (similar to US).
• Australia: First-to-use system, English-speaking market.
• Canada: First-to-use system, joined Madrid Protocol in 2019.

Defensive Filings

Even if you don't plan to operate in a country, consider filing defensively in first-to-file jurisdictions to prevent trademark squatters.

The China Problem

China deserves special attention. Trademark squatting in China is a massive industry:

• Squatters monitor international trademark filings and register the same marks in China before the legitimate owner
• Chinese law favors the first filer — even if the squatter has no intention to use the mark
• Recovery is difficult and expensive

Solution: File in China early — ideally at the same time as your US filing, or even before.

Cost Estimates

| Strategy | Coverage | Approximate Cost | |----------|----------|-----------------| | Madrid Protocol (5 countries) | Selected countries | $3,000-5,000 | | EUTM | 27 EU countries | $1,000-2,000 | | Direct filing (per country) | Single country | $500-2,000 each | | Comprehensive global (20+ countries) | Major markets | $10,000-25,000 |

Timeline

• Madrid Protocol: 12-18 months for all designated countries
• EUTM: 4-8 months
• Direct national filings: Varies widely (3-24 months)

Practical Strategy for Startups

1. Start with US registration — this is your base
2. File in China immediately — don't wait
3. File EUTM if entering Europe — covers 27 countries efficiently
4. Use Madrid Protocol for expansion — add countries as you grow
5. Budget 5-10% of your IP budget for international filing

Check Global Availability First

Before investing in international trademark protection, verify your brand name is available globally. Use BrandScout to check trademark databases, domains, and social handles — ensuring your name is clear before committing to international filings.