Trademark rights are acquired on a country-by-country basis. If you register your trademark in the U.S., you only have trademark rights in the U.S.
However, there are several international treaties that can help you “leverage” your trademark rights in one country to get trademark rights in another country.
The idea of a single “international registration” to get trademark rights throughout the world does not exist. But there is a special type of registration in the world of trademark treaties that is called an international registration. This is how it works.
Get a copy of 9 Secrets to Protecting Your Brand in an Online World
First, you have to get a trademark registration in a country that belongs to the Madrid System. The Madrid System is a trademark treaty that has been around for decades. Once you have a trademark registration in a country that is part of the Madrid System, you can ask your country’s trademark office to submit that registration to the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. WIPO will examine the information that your trademark office submits to make certain it is complete and that you have paid all of the appropriate fees. At that point, your trademark will become “registered” with WIPO. A registration number will be assigned to it and it will be known as an International Registration.
But here is the catch: An International Registration doesn’t get you trademark protection in any country. None. Instead, an International Registration (an IR) is just the first step to using the Madrid System to more easily get real trademark registrations in other countries that are members of the Madrid System treaty. Once you have an IR, WIPO can automatically send your trademark application to dozens of other countries, without using local lawyers and without much expense. The IR is like a “parent” trademark registration, even though it doesn’t protect your trademark in any countries by itself. Once registrations are completed in other countries (which is not the subject of this article), you can have WIPO control many aspects of these “child” registrations through the IR. For example, you can renew a trademark in 50+ countries by filing a single form with WIPO.
There are some reasons why you wouldn’t want to use an IR, but often it can be very cost-effective and convenient.
There are two parts of the Madrid System: The Madrid Agreement and the Madrid Protocol. The United States is part of the Madrid Protocol. As of January 2011, the following 83 countries are members of the Madrid Protocol
Antigua and Barbuda
Bosnia and Herzegovina
Democratic People’s Republic of Korea
European Union (for the Community Trade Mark)
Iran (Islamic Republic of)
Republic of Korea
Republic of Moldova
Sao Tome and Principe
Syrian Arab Republic
The former Yugoslav Republic of Macedonia
United States of America