The following is an edited transcript of our video International Trademark Registration Basics.
We often get asked by clients how they can obtain an international trademark registration. Trademark rights are generally limited to the country in which they are registered, but there are certain international agreements that allow you to file a single application and obtain trademark protection in more than one country at the same time. This includes regional areas which give you trademark protection in all the countries that are member to the agreements that create them. For example, the European Union, the Benelux Countries, the NDN community and the African and Regional IP Organization, which currently has 22 members.

In order to help decide in which countries to apply for trademark protection, we counsel clients to

  • begin thinking about protection in those countries where you are currently offering goods and services for sale, have offices or employees, or have manufacturing done;
  • if budget allows, start thinking about countries in which you have plans for expansion; and
  • if you’re selling goods, think about protecting your mark in the countries in which those goods are likely to be counterfeited.

One potential downside of having trademark protection in several countries can be the costs associated with maintaining and monitoring your trademark. However, we find that having several trademark registrations is a cheaper investment than trying to fight an infringer without having registered rights in a particular country.

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