Trademarks

International extensions

International extensions of your trademarks

 

You have filed your trademark in France. Now, your business has developed and you wish to sell overseas.

The intellectual property experts of BRANDON IP can advise and assist you in the processes of filing and registering your rights across the globe, thanks to the support of their international network.

Our legal practitioners and paralegal assistants are experienced in procedures of filing and examination of Offices at an international level and work together to offer you the best protection strategy depending on your requirements. The same applies to our foreign colleagues, who we rely on when necessary to secure the rights of our clients.

The system of protection and extension of trademarks internationally meets special characteristics. Trademarks are subject to the principle of territoriality, which means that they are only valid in a country or in a group of countries.

Firstly, there are national trademarks: they are valid in the country concerned.

E.g. a French trademark in France; a Portuguese trademark in Portugal, a Vietnamese trademark in Vietnam, etc.

There are also trademarks covering a given group of countries. E.g. this is the case of the European Union trademark (or community trademark), which in a single filing, covers all countries of the European Union (28 in 2019).

This type of trademark is pocket-friendly in terms of costs and management. In fact, it is simpler and cheaper to manage and renew a single European Union trademark rather than 28 national trademarks covering all the countries.

There are also other trademarks covering groups of countries, such as the OAPI trademarks (covering the member states of the Organisation Africaine de la Propriété Intellectuelle, i.e. 17 countries), or the Benelux trademarks covering the 3 member states: Belgium, Netherlands and Luxembourg.

The third type of trademark is the international trademark. It allows the holder of a basic national filing to extend its right in one or more signatory countries of the Madrid system comprising 2 treaties: the Madrid Agreement and Protocol.

It has a few benefits in terms of management, since there is only one trademark number, a single licence-fee; but this is not a single filing as is the case in groups of countries. In fact, it generates national trademarks that will be examined separately by the Offices of each country. The trademark can then be registered in certain countries and rejected in others.

We act in the role of attorney at your side to assist you in choosing the best protection strategy for your project.

 

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International extensions

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