At our law firm, we represent clients in a wide range of trademark matters, including international registrations and renewals, and worldwide protection of marks in commerce.
A U.S. business or entrepreneur who is already exporting goods or who intends to export goods outside the country or even produce them abroad for sale in other countries should talk to an attorney about how to best protect lucrative marks in markets abroad.
Madrid Protocol
The Madrid Protocol is an international treaty that streamlines application for trademark protection in any of the 117 signatory countries, which include the U.S. and the European Union. According to one source, members to the Protocol represent “over 80 percent of world trade.”
The World Intellectual Property Organization or WIPO in Geneva, Switzerland, administers international applications under the Protocol. When a trademark owner files an international application, it chooses the member countries in which it wants to seek protection. Each member country will administer the application received through the Protocol according to its own laws.
Canada
The State Bar of Texas reports that revised Canadian trademark laws are likely to become effective in “early 2019.” Anyone doing business in Canada should speak with a knowledgeable international trademark attorney now because there are certain actions that may be better taken before the new law takes effect. For example, the State Bar of Texas article suggests that periods of renewal will decrease from 15 to 10 years, so renewing before the new law makes sense. In addition, new fees will take effect and standards for sound or color marks will become more stringent.
United Kingdom and Brexit
For those with trademark interests in the British market or who plan to expand there, talk to a lawyer about the impact of ongoing Brexit negotiations and the eventual separation of the U.K. from the European Union. For example, the State Bar of Texas recommends considering designating both the U.K. and the E.U. in a Madrid filing.
(The State Bar of Texas CLE article is available on Westlaw at Advanced Intell. Prop. L. 18 VI.)