Filing a Trademark Application Outside the United States
1. What types of applications may be filed?
Updated September 2016
For protection in a single country or jurisdiction, a national trademark application may be filed in that particular country/jurisdiction’s local trademark office.
For protection throughout the European Union (EU), a single application for a European Union Trade Mark (formerly Community Trade Mark), covering all member states of the EU, may be filed with the European Union Intellectual Property Office (formerly Office for Harmonization in the Internal Market).
For protection in two or more countries or jurisdictions that are contracting parties (i.e., signatories) to the Madrid Protocol or the Madrid Agreement, a single application may be filed with the World Intellectual Property Organization (WIPO). The Madrid Protocol and the Madrid Agreement allow the owner of a live application or registration in a country/jurisdiction (the “home” application or registration) to obtain an International Registration (IR). An applicant may file for one application in one language, with the home application or registration as the basis for the IR, and designate as many participating countries/jurisdictions as it chooses.
2. In general, what are the requirements to obtain a filing date?
- The full legal name, nationality, state of incorporation, registered office, and/or street address of the applicant.
- A clear identification of the mark, stating that it is either a word mark, a device mark (containing a logo), or a combination of the two (a device mark with letters). For a device mark or combination mark, a clear representation of the logo/device is also required.
- The full range of goods and/or services to be covered. Be mindful that while most jurisdictions have adopted the Nice Classification, the classification system set up by the Nice Agreement, the local practice before the various trademark offices may impose special requirements for descriptions of goods or services.
In all countries that are contracting parties to the Paris Convention, there is the possibility of claiming the filing date of the home application, if the foreign application is filed within six months from the application date. This is known as convention priority. If an application is to be filed claiming convention priority, the original filing date, application number, and country of the basic application from which convention priority is to be claimed must be supplied. A certified copy of the basic application for registration (with a translation into English) may be required in certain countries.
3. What additional requirements might a particular trademark office impose?
Some trademark offices will consider whether an applied-for mark is in conflict with a prior-registered mark. Other offices do not consider whether an applied-for mark is similar to a prior-registered mark. Some may require a certified copy of the home application or registration. Please note that this list is not exhaustive.
Under the Madrid Protocol, the application is examined by each designated country/jurisdiction’s trademark office, which may accept or reject the application. If a particular office issues a provisional refusal of an application, a trademark agent in that particular country/jurisdiction may need to be hired or consulted to deal with the rejection before the local office.
For detailed information about local office requirements, consult INTA’s Country Guides. Do not assume that trademark office practices and requirements are the same in each country or jurisdiction. Always consult with a local agent to be certain that an application conforms to local laws and practices.
Additional INTA Resources
Topic Portal: Registration
Gateway to country-specific online trademark information, with links to valuable INTA content and external trademark-related information. INTA membership required.
Country Guides: Essential Information on Trademark Protection Worldwide
Searchable database of basic information on trademark filing, prosecution, registration, maintenance, and enforcement in more than 100 jurisdictions. INTA membership required.
International Treaties Fact Sheet
Trademark Fees (Global) Fact Sheet