International brand protection

Few entrepreneurs are aware of the fact that the registration of their trademark in the Patent Office of the Republic of Bulgaria gives them protection only on the territory of the country. This means that if a competitor starts using their brand in Romania, they have no protection against that use.

Nowadays, business is rarely limited to the territory of our country. Anyone who thinks globally and wants to develop their business in international markets needs to protect their intellectual property at the international level. There are several ways this can be done.

1. European brand

This is the most common and cheapest option for registering your brand with a large territorial scope. The European trademark is valid throughout the EU. The procedure is fast and relatively cheap, considering the fact that you get registration in 27 countries. Applications are processed by the EUIPO (EU Intellectual Property Office) under Regulation (EC) 2017/1001. An application can be submitted in any of the EU languages, only one fee is paid, and only one department is communicated with. The only drawback is the possibility that any owner of an earlier similar mark, which operates even only in the territory of one Member State, can file an opposition against the mark. Of course, this can be avoided if a qualitative research is done beforehand by an intellectual property specialist.

2. International registration under the Madrid system

The Madrid System for the International Registration of Marks exists under the Madrid Agreement and its Protocol. The authority performing the registration is WIPO - the World Intellectual Property Organization. Through the system, each applicant can choose in which of the more than 190 member states of the system to register their trademark. It is necessary for the applicant to have a registered trademark or a filed application in one of the member countries, which is used for the basic application. Depending on the countries selected, a fee consisting of the WIPO fee and the fees of the individual departments is generated. A lump sum is generated and paid to WIPO, but the nature of the system implies significant costs for this registration. This option is recommended only when the mark will actually be used in the countries for which protection is sought, when these countries are outside the EU, and when these countries are more numerous. The use of the Madrid system for registration in 1 or 2 countries is not recommended. The procedure is slower and significantly more expensive compared to European trademark registration. The advantage is the communication with only one department in one language, the payment of one fee, the relative independence of requests in individual countries, as well as the possibility to subsequently expand the territorial scope of the brand further.

3. National protection

It includes submitting applications for trademark registration to the department of each country in which the activity will be carried out. The advantage of this option is the independence of the requests from each other - it is possible that the Greek office may refuse the registration, but that of Serbia may register it. The disadvantages of this option are many. In most cases, it is necessary to use a local representative - a lawyer registered in the territory of the country in which you are registering the brand. This means that your lawyer should contact a colleague from the specific country with whom to work together. The application is submitted in the language of the department, payment is made in local currency, the proceedings are conducted in compliance with the legislation of the specific country. This option is recommended if registrations are needed in no more than 2-3 countries outside the EU.

The above options can be combined with each other. In each specific case of my practice, I prepare a detailed analysis according to the needs of the client and give recommendations on which option for international protection to choose. It is equally important not to register the brand in too many countries and not to miss any important destination. The most important thing for international registration is to contact a specialist who knows the different systems and legislations. The procedures are associated with significant costs, and if not monitored by an experienced person, there is a high risk of being refused and losing the fees paid.