When a business seeks for expansion, one of the first questions made is whether there is a worldwide trademark registry. The simple answer to that question is no, there is no global trademark registry, as trademarks grant their owners territorial rights.
Keep reading in order to know what you need in order to register your trademark in more than one country.
What does it mean that Trademark Law is Territorial?
This means that if you are going to use the trademark in several territories, you must obtain protection for each territory. For example, in Brazil, in order to obtain the protection of a trademark, you must register it with the Instituto Nacional da Propriedade Industrial (INPI). The trademark right granted by the INPI is not extendable to other territories.
However, with the presentation of an application before INPI, you will obtain a ‘Right of Priority’.
What is the Right of Priority in the Trademark Registry?
The Right of Priority arises from the Paris Convention. 177 countries of the world are part of this convention.
Said treaty establishes that if you file a trademark in a country, you get a period of 6 (six) months to file the same application in the offices of any other member state of the agreement.
Continuing with the previous example, if you filed an application before INPI in Brazil and would like to also obtain trademark registrations in Colombia and Mexico, you would be able to file – within the following six months – the application with the certificate of the first filing at the INPI. The date of filing before Colombia and Mexico would be the one of the trademark filing in Brazil.
Is there an “International” Application Submission System?
Even though a worldwide trademark registry does not exist, the “Madrid System” makes it possible to present a single international application for several member countries of said system. However, a local or national office will carry out the analysis and make the final decision. Consequently, each country’s office may make the necessary observations and decide whether to grant or deny the registration.
It will be necessary for the holder to have a connection with one of the member states of the protocol. The connection can be fulfilled with one of the following requirements: to have his address or an industrial or commercial establishment in one of the member countries of the Madrid System, or be a national of one of those countries. Also, it will be necessary to have what is called a “basic mark”, which means you should first have applied or obtained a trademark with the IP Office of the member you have a connection with.
There is no simple way of obtaining a worldwide trademark registration that grants protection in all countries at the same time. However, at Legal Core Group we have specialized associates in all parts of the world through whom we carry out the registration of trademarks in each country of interest.
If you want to register your trademarks in Latin America, we suggest the following article.
Do you have questions or queries? Contact us.