The owners of national and EU trademarks, in particular when getting closer to the priority deadline, inevitably need to face the following dilemma: foreign national applications or international filings with designation of multiple countries?
The answer to this recurring question is not standard and straightforward. Since there are many aspect to be considered, trademark owners need to elaborate the most suitable strategy to extend their trademark’s protection abroad.
Generally speaking, especially if a company, being for example an Italian entity, already owns a trademark registered in Italy or before the EUIPO, the propensity usually is to opt for an international filing since said option often offers, apart from its practicality in the management of a sole registration, an economical advantage in terms of costs to be borne.
However, as it often happens also in other contexts, the cheapest choice not always turns out to be the most suitable and successful one.
In fact, in order to choose the best option, it is necessary to evaluate several peculiar aspects: in a preliminary analysis, it is important to consider the number of countries involved, the classes of interest, the trademark’s characteristics in terms of absolute grounds (in particular with regards to distinctiveness) and also the scope of protection and the available timeframe.
Indeed, in case of an international application or extension of an existing international registration, the term within which the single Authorities involved complete the formal/substantive examination and provide their outcome is of 12/18 months starting from the granting of the international registration or from the acceptance of the subsequent extension. Therefore, in case a right owner needs to receive in a shorter time the outcome of registrability of its sign abroad, it may eventually choose to opt for a local application, considering that the timing to receive the response of formal/substantive examination from the Office in charge is usually shorter than the one for international designations regulated by Madrid Protocol.
With particular reference to China, the timing to complete the examination of national applications is definitely shorter than the terms of 12/18 for Chinese designations of international registrations. Therefore, it is often preferable to suggest a right owner to go for the “local” path, expecially when said owner has the need to receive a feedback on possible conflict of its trademarks with prior identical and/or similar trademarks registered in the country in a short time.
Moreover, in some cases, the filing procedure through the international system happens to be more standardized for many countries and can determine the lack of certain features which are typical of some local filings and which, sometimes, end up to be relevant for an appropriate trademark protection.
Said exception regards, for example, the United States of America: in fact, it is important to know that, for local applications, at the time of filing it is possible to claim a date of first use of the sign in commerce which, on the contrary, is not possible in US designations of international registrations, since this latter is based by default on intention to use. This difference is particularly significant in those countries, like the common-law ones, where the use of a trademark prior to its filing determines exclusive rights on the sign to its owner, provided that said use complies with the requirements imposed in each country in terms of effectiveness and continuity of use of the sign.
It is also important to highlight that, given the lack of a global harmonization, the interpretation of the International Nice Classification of Goods and Services can vary according across countries.
In fact, with particular reference to specific lists of product and/or services, it often happens that the lists presented to WIPO (World Intellectual Property Office) through the Office of origin face some objections or provisional refusals issued by the Examiners of the concerned countries.
Whilst, it is not that likely to receive objections in case of local applications, especially when seeking the advice of local attorneys who carefully check – voluntarily or upon request of the attorney in charge or the right owner – the admissibility of the product/service items concerned to be claimed in the filing of the trademark application.
Furthermore, there are some types of trademarks for which a local application is preferable. This happens to be the case since there is no consistency among the single regulations in terms of compilation and filing requirements of trademark applications.
Frequently, this occurs in relation to collective marks or certification marks, since each Trademark Office can categorize those types of trademarks differently and can, therefore, request different information to be filed together with the application, which, expecially for trademarks including designations of origin or geographical indications, can not only be limited to the regulation, but also regard other documents, such as production guidelines, consortium statutes etc.
Similar differences can also occur in relation to the required formalities. For instances, in countries in which simple copies of documents are not sufficient but it is necessary to submit notarized documents, translated into the local language or, in some cases, legalized with apostille or by local Consulates.
That is why, in order to avoid or reduce the risk of objections, it is always advisable to seek the assistance of trusted trademark attorneys in order to evaluate the solution that is preferable and that meets the applicant’s needs.
Said analysis is even more relevant in relation to those countries who just recently joined the Madrid System and were used to impose very different filing requirements compared to those required by the Italian Law or by the general principles regulating the international trademark registration system.
For said reason, we have thought that it could be interesting to pause on the regulation of some of those countries which can now be designated in international applications or can be designated for extensions of existing international registrations. Among these countries, we have decided to focus on Canada and Brazil.
With regards to Canada, before its access to the Madrid System, its local regulation used to offer incomparable advantages in terms of affordability of filings: indeed, not only the registration lasted for 15 years, but also a single application could include from 1 to 45 classes together with no additional costs. Thanks to the above, companies that just started their own activity had the possibility to protect their trademarks even for products/services that they were not interested in, which would have then be cancelled in occasion of the local filing of the necessary declarations of use.
However, with its access into the international registration system, Canada had to introduce significant amendments to its regulations regarding trademarks in order to align with said system.
Nowadays, when facing the need to protect a trademark in Canada, it would be spontaneous to include it in the list of countries to be designated in an international filings or as an extension of existing international registrations… nonetheless, this is not always the preferred option! In fact, after an in-depth analysis conducted with the kind support of special local attorneys, even though the practice is quite new since Canada joined the Madrid Protocol only in June 2019, it came out that local filing could still be preferable in order to avoid provisional refusals due to the amendment of the products/service’s list, also considering that this country, just like the USA, has strict requirements for the completion of classes lists. In addition, the international option might leave the right owner without the benefit of receiving useful tips from local attorneys in terms of registrations requirements and recommendations or advice about on possible restrictions or risks connected to the local use of trademarks.
Nonetheless, if the right owner chooses the international path instead of the local one, it would be advisable to appoint for the local designation a Canadian attorney before the local Trademark Office, in order to be sure not to miss out on communications or notifications that WIPO might send directly to the right owner and in order to have the chance to immediately reply to possible refusals or oppositions filed by third parties.
Also in Brazil, the international option is not always preferable, at least in the initial phase, considering that also this country joined the Madrid Protocol recently, namely on July 2nd 2019.
After a first analysis conducted thanks to the cooperation with trustable local attorneys, it came out that the international option, besides the general implications related to the provisional refusals due to valid prior rights in the country or to inadequate description of products and services, involves serious risks when a local attorney is not appointed before the Brazilian Office: in fact, in case of oppositions filed by third parties against Brazilian designations of international registrations, the Brazilian Patent and Trademark Office publishes such oppositions only on the local Bulletin but does not send any notification to the owner of the opposed right, nor to the WIPO. Therefore, it goes without saying that with no local attorney, a right owner could find out that its trademark is not protected in Brazil when it’s too late, for example when the products are already on the market – everything because of an opposition that the owner ever known about.
In view of the above analysis, even though the benefits deriving from the international registration system to right owners for the protection of their rights are real and appreciable, it is undoubtedly necessary to also know the pitfalls of such system.
Therefore, we strongly recommend to right owners who are willing to extend the protection of their marks in foreign countries to carefully elaborate their filing strategy based on their specific needs and always seek support from expert Trademark attorneys, whom know in detail the peculiarities of the different registration systems and would advise them on the best possible protection strategy for their trademarks abroad.
