INTERNATIONAL TRADEMARK REGISTRATION

International Trademark Agreements

Under the Paris Convention for the Protection of Industrial Property, trademark applications filed in other countries may take as their effective date the filing date of a United States application. The Applicant would thereby gain priority in such countries over other applicants which file after the U.S. filing date. However, applicants can take advantage of this international provision only by filing within six months of the U.S. filing date.

On the other hand, while the U.S. has signed the Paris Convention, it has not signed (but is considering) the Madrid Agreement. U.S. applicants therefore may not file one application covering the countries of the Madrid Agreement, but must register country-by-country, except in the European Union, Benelux, and Malaysia.

The rights of trademark owners and applicants are controlled in part by the following International Trademark Agreements, and in part by the laws of the county (state) in which trademark rights are to be exercised.

1. Trademark "Protection" Treaties

The first general group of treaties defines internationally agreed basic standards governing intellectual property in each country. For example, foreign applicants are treated on an equal footing with nationals of the country in which registration is sought ("national treatment") under the Paris Convention. These treaties include the following:

  1. Paris Convention for the Protection of Industrial Property
  2. Nairobi Treaty on the Protection of the Olympic Symbol
  3. Trademark Law Treaty
  4. Trademark Law Treaty - Articles
  5. Regulations Under the Trademark Law Treaty

2. Global Trademark "Protection" System Treaties

The second general group, known as the global protection system treaties, ensure that one international registration or filing will have effect in any (selected) signatory State. The services provided by the World Intellectual Property Organization (WIPO) under these treaties simplify and reduce the cost of making individual applications or filings in all the countries in which protection is sought for a given intellectual property right. These treaties include the following:

  1. Madrid Agreement Concerning the International Registration of Marks
  2. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
  3. Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement
  4. Madrid System for the International Registration of Marks

3. Classification Treaties

The third and final general group of treaties consists of classification treaties, which create classification systems that organize information concerning trademarks into indexed, manageable structures for easy retrieval. These treaties include the following:

  1. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
  2. Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks

Trademark Jurisdictions

While a trademark owner's rights are controlled in part by the above International Trademark Agreements, particularly as regards registration, most questions of trademark law are decided by reference to the law of the individual sovereign nations. This is particularly true of questions of infringement. Individual trademark jurisdictions include the following countries:

Western Europe

Eastern Europe

Middle East

Commonwealth of Independent States

Northern Africa

Southern Africa

Indian Subcontinent

Far East

Asean & Environs

North America

Central America

Caribbean

South America