Most practical way to register your trademark in a foreign country

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Published: 04th June 2017
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This article discusses multiple methods to apply for international trademark. Comparisons on application costs, common problems and difficulties of these different methods will be made to offer applicants suggestions based on their situations.
If you have a local brand in your country and you would like to expand your business abroad, you will need international trademark protection at foreign markets. This article will give you some ideas of some good ways, in my opinion, to apply for international trademark protection.
Perhaps you know you can apply international trademark through the WIPO (World Intellectual Property Organization). But you may not know why WIPO is the first one on the list to be discussed. Applying through WIPO is the cheapest way, especially if you apply in multiple countries. Thanks to the Madrid Protocol, The cost of applying through WIPO can be as low as 10% of the price of any single application channel.
Let us skip the details about how the Madrid Protocol works. The main benefit it can bring to you is to “ensure the protection of your marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency” (Madrid Protocol). You are likely to agree that the Madrid Protocol can save you a lot of effort in registering trademark in multiple foreign countries. However, this system has two major disadvantages.
First, you can apply your trademark in as many countries as you wish. But the decision to whether process your application is not up to you or the WIPO. It says “it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted” (Madrid Protocol). In case your trademark or a fragment of it conflicts with an existent or under-processing trademark in your country you applied, it is very likely that your trademark application would fail.
Second, your trademark registry will be synchronized in all the countries you applied through Madrid Protocol. It means if your trademark protection loses or changes in your native country, this change will apply to all the countries where you apply for trademark through Madrid Protocol. It says “the International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members” (Madrid Protocol).
If the above situation occurs in your international trademark application process, you can go still apply through private channels. The second option I recommend to apply for trademark in foreign countries is to make the application separately in different countries. There are three channels you can choose.
The cheapest way is to find an attorney in the foreign country where you want to register your trademark. You can search on the Internet or any media for a foreign attorney to do that work. If you or your employees can conquer problems like foreign language and international payment in that country, I recommend you to consider this solution first.
Otherwise, you will need to find a local agency to apply for trademark in foreign countries. If you have to go through this channel, I recommend you to find a large agency, because larger agencies usually have more foreign intellectual property associates, who can provide foreign trademark application services. And there is another tip. When you require a local agency for this service, do not ask them if they can do it but ask if they have available associates to do the work in that country. I will explain the reason in the next paragraph.
If you cannot find a agency in your local network which has foreign associates to do the work, you are left with the last option. The international Intellectual property proxy groups usually have associates in foreign countries. However, those groups are not always reachable directly as they mainly work as an intermediary between domestic and foreign agencies. You might have to require their service through your local agencies. Consequently, you will have to pay three parties (domestic agency, proxy group and foreign agency). This international trademark application channel is very common and also relatively more expensive. Avoid it unless all the other options are unpractical.

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