The Differences When Registering a Trademark in Different Countries

The rules for registering a trademark are governed by the laws of the country where the application is made, and these rules differ from country to country. Despite these differences, however, many territories offer similar processes and protections, largely underpinned by international intellectual property (IP) treaties and agreements.

Alongside the national offices and registration processes discussed below, regional and international registration mechanisms can ease the application process for companies intending to register in multiple countries. Two key international bodies are the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO).

• United States of America

The United States remains one of the busiest territories for trademark registration in the world. One of the main features that differentiates U.S. trademark registrations from other national legislation is the application of the ‘first-to-use’ principle, under which the owner of a brand is the first to use it, not the first to register it. According to this principle, the bona fide use of an unregistered mark may be invoked against third-party holders of a subsequent registration, thereby vetoing any of the subsequent company’s rights. This U.S. approach contrasts with that of other countries, including Italy, China, and Brazil, where it is fundamental to register a brand ahead of placing it on the market.

Indeed, U.S. law imposes several obligations after a registration is filed, including supplying proof of the actual use of the trademark. Companies are under an obligation to maintain use of their mark if they intend to keep the brand active and avoid revocation. Ownership, therefore, does not rest merely upon registration, but also actual use of the brand.

• Italy

In territories such as Italy, non-registered marks are still protected (as unregistered trademark rights), although the extent of this protection is less than that afforded to registered marks. Pursuant to the Italian Civil Code, trademark registration does not nullify the rights of those who have used it up until this point. Under certain conditions, someone who proves they have previously used a mark that another is seeking to register has the right to continue to use it, provided this is within the geographical and general limits of its previous use. This right remains, despite trademark protection being effective from registration, with the applicant enjoying the irrebuttable presumption of ownership rights.

• China

Chinese legislation, on the other hand, only grants protection for marks when they are actually registered. The previous use of a brand, therefore, does not confer any rights of priority. Furthermore, as in Germany, France, and Japan, the ‘first-to-file’ principle applies: whoever files the trademark application first acquires the ownership rights, in stark contrast to the U.S. approach. In China, as well as other territories using the ‘first-to-file’ principle, it is essential to register well in advance of the effective start of business activity to ensure such use is protected.

Moreover, due to lengthy waiting periods to obtain trademark protection (anywhere from 18 months to three years) and the fact that protection only subsists once registration has been obtained, it is advised that businesses wishing to register a mark in China allow plenty of time for protection to arise before entering the market.

Additionally, Chinese law requires a translation if the mark is in a foreign language. When doing so, most companies register a corresponding version using Chinese characters to avoid the risks of counterfeit competitors.

Unlike many other systems, China also requires separate applications for each class of goods or services, increasing both the time and expenditure for registration of a mark.

• Brazil

In line with the Chinese methodology, Brazil also requires that each registration in a new class of goods or services be completed on a new application form. Additionally, Brazil adheres to the ‘first-to-file’ principle, meaning registration of a trademark is necessary for protection. Further requirements for trademark registration in Brazil are that the mark must be capable of being visually perceptible, ruling out the registration of 'unconventional' trademarks, such as sounds and smells.

Brazilian law also stipulates that, if a mark has not been put to bona fide use within five years of registration, the mark may be subject to revocation action—before the expiry of the 10-year term.

• India

It must be noted that, in India, marks considered by the authorities to be contrary to public order or good morals, or otherwise deceptive or offensive, are not capable of registration. Many other territories have such a clause, including the United Kingdom; however, due to the multitude of religions and beliefs present throughout India, it is advisable that businesses wishing to register their brands in this territory carry out prior analysis in this vein.

If, upon publication of a registered mark, a person wishes to file an opposition, on any grounds, they must do so within four months, with the opportunity to apply for a one-month extension when it comes to supplying evidence of the reason for opposition. This potential extension in the time for opposition means the time taken to register a mark may increase.

• International/Regional Marks

EU registration allows a trademark to be registered in all EU member states (current and future) using one application form and set of fees. The EUIPO receives applications from all over the globe and, upon registration, allows trademark holders to exercise their exclusive rights in all EU territories.

Wider than the EU trademark is the WIPO International (IR) mark. Referred to as the Madrid System, this registration process enables businesses to file one international application from their country of origin, in one language, and one set of fees, with the mark then registered in all territories that are party to the Madrid Agreement. This international registration process entails access to the same protection that the laws of member countries confer upon national trademarks.

For strategic advice on the territories where you should register your trademarks, speak to your legal advisor. For support in managing trademark applications effectively, contact our subject matter experts now.