International trademark registration – how does it work?

introduction

In the global business world, entrepreneurs and small business owners strive to protect their brand even beyond national borders. Contrary to what might be implied, there is no such thing as a single “global trademark” that is automatically valid in all countries. Trademarks are territorial – their protection is limited to the country in which they were registered. Therefore, to obtain international protection for a brand, a brand registration must be made in foreign countries relevant to the activity.

The two main ways to do this are:

1. Submitting separate registration applications in each country and destination.
2. Filing an application for international registration under the Madrid Protocol – a system that allows for a central registration application for several countries simultaneously.

In this article, we will explain how the process works, review the differences between the methods, how to choose an appropriate strategy according to the target markets, what the expected costs are, what the registration steps are, and how to avoid common mistakes.

Methods for registering an international trademark

1. National registration in each country

In this method, an application for trademark registration is submitted in each target country separately, usually through a local attorney. The advantage is that each registration stands alone – if the mark is rejected in one country, it does not affect other registrations.

However, the method involves high costs, extensive bureaucracy, and separate management of renewal and enforcement deadlines in each country.

2.  International registration under the Madrid Protocol

The Madrid Protocol is an international arrangement for managing trademark applications in multiple countries through a single application, filed with WIPO. Israel is a member of the Protocol, along with over 110 countries – including all major economies.

To file an application under the Madrid Protocol, you must first file a base mark in your home country (for example, in Israel), and only then can it be expanded to other markets.

Advantages:

• Presentation is concentrated in one language.
• An efficient and cost-effective process compared to separate registration.
• Countries may be added in the future.
• Renewal of signs is also carried out in a centralized manner.

Disadvantages:

• Dependence on the base mark for 5 years (if it is revoked, all international applications may be revoked).
• If a particular country requires a correction or objects to the mark, it must be dealt with separately.
• Not all countries in the world are members of the protocol.

How to choose a listing strategy based on target markets

• Number of countries: If you want to protect a trademark in dozens of countries, the Madrid Protocol is almost always preferable. If you only have 2–3 countries, a separate registration may be simpler.
• Target countries: Make sure that all destination countries are members of the Madrid Protocol. Countries that are not included in it (currently few) require separate registration.
• Market suitability: Sometimes there is a need to adapt to the local market in terms of wording or design – something that is easier to do in a national presentation.
• budget: In general, filing under Madrid will save you money if you are registering a global trademark in several countries. National registration is only worthwhile when it comes to a few countries or in exceptional cases.

Expected costs of registering an international trademark

• Registration fees: The Madrid Protocol includes a basic fee + fees per country. The total cost for 5–10 countries can reach thousands of shekels or dollars, but is significantly lower than registering separately in each country.
• Attorney or patent attorney fees: One-time or hourly payment, depending on the complexity of the case and the number of countries.
• Innovation: Every 10 years. In Madrid registration – a centralized process. In national registration – separate with each country.

Steps for registering an international trademark

1. Early search: Check whether the mark is available for use in the target countries.
2. Registration in the home country: Required before filing an international application under Madrid.
3. Submitting an international application (if applicable): Indicate which countries are selected, detail the list of products/services.
4. Examination in target countries: Each country reviews the application according to local law.
5. Handling objections: If so, you should consult a local lawyer.
6. Registration: If no objections were filed or they were resolved – the mark is registered.
7. maintenance: Active use of the mark, periodic renewal, and monitoring of violations.

Common mistakes to avoid

• Assuming this is a single global trademark: These are separate registrations in each country, even if they were submitted in a centralized manner.
• Waiver of early search: May lead to immediate rejection.
• Incompatibility of the mark with the various markets: It is important to check meanings in different languages.
• Use of an unregistered mark: Without registration, it is very difficult to enforce rights.
• Complete reliance on the base sign: In the event that it is canceled, the entire international registration may be canceled.

In conclusion

Registering an international trademark is an important step in protecting a brand in global markets. There are two main ways to do this – filing separately for each country or filing a single application under the Madrid Protocol.

Each method has advantages and disadvantages, so it is important to adapt the strategy according to the scope of activity, budget, and the types of markets the business addresses.

One thing is certain – a strong brand also needs strong legal protection, and this starts with choosing the right registration path.