Legal Fixation

Foreign Trademark Registration

Unlike in the United States, in most countries the only way to gain trademark rights is to have a registration. During the initial intake for our trademark clients we always ask what their plans are for using their mark on goods, or in connection with services, in foreign countries. Even if there is no plan to expand into these markets right away, it is likely that a registration may still be obtained. This conversation always includes a discussion about priority under the Paris Convention, which allows an applicant to claim a priority date in foreign countries based on the date the original application is filed, provided that the subsequent filing are done within six months of the original filing. I cannot emphasize enough the importance of filing for foreign registrations.

Michael Atkins has a great post regarding a PTO program on anti-counterfeiting and piracy. Michael quotes Susan Anthony, an attorney-advisor in the PTO’s Office of International Relations, whose presentation was included on a CD with handouts for the event. I believe that the quote Michael pulled out is so important that I am reproducing it below.

If you take nothing else away from this presentation, take this away: trademark rights are territorial. That is, trademarks must be protected on a country-by-country basis. We’re spoiled in the United States. We put on our American cap and we think that the world thinks like Americans. We’re spoiled by the fact that registration is not required in the United States. Many of us perhaps are not aware of registration, but we have rights – we are protected in our unregistered marks pursuant to the common law. But that is not so in most of the countries of the world, where a mark must be registered in order to have any rights in that country. Most countries follow a first-to-file rule, which means that protection is granted to the first party who files an application and receives a registration. Again, that is different from the United States, which is a first-to-use country, and there are several other countries – just a handful – that also are first-to-use. … [Y]ou must search and file in each country in which you want trademark protection, in which you wish to sell your goods and services.

posted by Aaron Silverstein @ 4:52 PM