How to Protect Your Brand Globally?
It’s always a myth that a trademark can be protected globally by single registration. While we do wish to have such convenience, there is currently no unitary system that could register a trademark simultaneously in every country across the globe. Registration and protection of trademark is territorial-based and it is the authority and discretion of the government of a country (Trademark Office most of the time) to grant exclusive use onto a trademark. Generally, there are 3 approaches to protect a brand globally. Each comes with its own pros and cons.
A. Direct Filing
File the trademark application in the intended countries directly. This is the most common and conventional approach.
Pros: Each country’s application is independent of each other, hence an objection in 1 country should not affect the application in other countries.
Cons: Expensive, more formalities to be complied with (eg. notarizations, legalizations, translations & etc).
B. Regional Applications
There are some organizations that do provide regional trademark registration system, whereby one registration could cover numerous countries within the same region, for example, the European Union Trade Mark (EUTM, 28 member states of EU), the African Intellectual Property Organization (OAPI, 17 member states), and the African Regional Intellectual Property Organization (ARIPO, 19 member states).
Pros: Cheaper and administratively convenient.
Cons: Refusal in 1 country may cause the entire regional application being refused. There is option to convert the regional application into separate national application.
C. Madrid Protocol
The Madrid System is a centralized filing procedure administered by World Intellectual Property Organization (WIPO) to facilitate trademark filings in the 122 member states of the Madrid Union. Different from regional application, it does not automatically grant trademark registration in any member states of the Madrid Union. The trademark applications are still subject to examination and approval by the Government Trademark Office of the respective countries by considering the local laws.
Pros: Cheaper and administratively convenient. It eliminates the need of engaging local trademark attorneys and liaising with the local Government Trademark Offices separately, which usually involves high costs. The applicant only needs to deal with the Government Trademark Office of the home country
Cons: If the application in the home country has been refused or cancelled in the first 5 years, the subsequent applications in the other designated states will fall too. This is known as “Central Attack” or “Home Attack”.
There is no conclusive verdict as to which approach is the better one. It is advisable for brand owners to seek professional advice to devise a global filing strategy.
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Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
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