Chipman Mazzucco Emerson LLC

Protecting trademarks around the world

Businesses in Connecticut with great intellectual property may be wondering how they can most effectively protect themselves outside the borders of the United States. Many know the benefits of having a federal trademark within the country to protect their brand and image. In addition, trademark holders need to constantly be on guard against infringement in order to preserve their exclusive rights. When companies do not register their trademarks, they could face serious risks to their intellectual property. However, all of these provisions only apply within the borders of the United States.

Companies may wish to expand their trademark protection if they are considering doing business overseas. Even if no expansion is in mind, the rise of the online marketplace has meant that many companies are now international by default. In the past, only the largest businesses filed international trademarks. However, given the global reach of online sites, many companies with a focus on digital commerce may want to file for an international trademark. In some countries with fewer protections, counterfeiters and others may focus on copying trademarked brands. Having a global plan for trademarks can help businesses to protect themselves against infringers around the world.

A global treaty, the Madrid Protocol, aims to streamline the process for international trademark protection. One application in a single language can be submitted to the World Intellectual Property Organization, or WIPO. This application can be applied to all 90 countries that have adopted the protocol. After review by WIPO, it can be submitted to the specific member countries where a rights holder would like to make an application.

The Madrid Protocol does not include all countries, and separate applications may be required elsewhere. An intellectual property attorney may work with business owners and rights holders to develop an international plan to protect their trademarks and prevent infringement.

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