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Overseas Trademark Registration

 

Nov 2020
As China's "One Belt, One Road" strategy progresses, more and more enterprises are "going global" and actively exploring overseas markets. Enterprises are also facing various problems regarding intellectual property rights infringement or identical products being sold. The problem that enterprises face or will be facing when “going global” is how to better protect their intellectual property rights. We usually say that the overseas strategy of trademarks requires advance planning and overall placement strategy. The brand should also come before the product. In this case, how can we protect overseas trademark registrations?
With more than 200 countries and regions in the world having different trademark legal systems, how should overseas trademark registration be carried out to save time and money? Currently, there are three main ways for enterprises to carry out overseas trademark placement: the first is through the Madrid system for international trademark registration; the second is through regional organizations, mainly via the European Union Intellectual Property Office (EUIPO) and the African Intellectual Property Organization (OAPI) for trademark registration; and the third is through individual-country registration – submitting trademark registration applications to the trademark authorities of each country respectively.
1. Madrid system for international trademark registrations. The so called “Madrid international application” is an international trademark application system created based on the provisions of the Madrid Agreement Concerning the International Registration of Marks signed in 1981 and the Protocol Relating to the Madrid Agreement which was passed in 1989. The benefits of the Madrid international trademark application include having simple and convenient procedures, low costs, covering multiple countries with one application etc. However, its limitations include unstable registration effect and inability to expand the range of the registered products or services.
2. Trademark registration through regional organizations. EUIPO and OAPI are the two major regional trademark registration organizations in the world. Both organizations have a wide coverage and have many member states. They are the main choices of many domestic enterprises when filing for overseas trademark applications. Both EUIPO and OAPI adopt the “first-to-file” principle. The authorities will not reject a trademark application on the basis of the existence of an identical or similar prior trademark. Their difference is that, EUIPO makes a public notice after the trademark examination is completed and anyone can oppose the trademark within the 3-month notice period; OAPI makes the public notice after the trademark registration is completed – a post-notice. Only trademark applicants or registrants of OAPI can oppose the trademark and the trademark notice period is 6 months.
3. Trademark registration through the individual-country method. To register a trademark with this method, a local lawyer must be appointed to file a trademark application to the trademark authority. It should be noted that, if a trademark registration application is filed in the US on the basis of intent to use, the applicant must submit to the authorities the evidence and statement of trademark use after the trademark is approved for registration but before the trademark registration certificate is issued.
To summarize, every registration method has its advantages and disadvantages. Enterprises should choose the most suitable method for carrying out overseas trademark registration based on their own needs.
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BKIP Limited

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(852) 3157 0065
tm@bkip.com.hk