Many people may think that a trademark can be protected globally by a single registration, like how a domain name is registered. We’re sorry for bursting your bubble but this is not the case.
Generally, trademark protection is territorial in nature. This means that the protection of a trademark is only limited to the country or region where the trademark is registered. Because of this, global traders who wants to protect their trademarks across various countries would need to register their trademark separately in each of the country. We call this process national filing.
To give you a clearer picture of how this is done, let’s look at how Google Inc. sought global protection for its "Google" trademark, which is used by everyone across the world. According to the World Intellectual Property Organization (WIPO) brand database, Google Inc. has registered its trademark in more than 63 countries or regions as of today. We have listed down 15 of them in table below as illustration.
No. | Country | TM No. | Class |
1 | Malaysia | 2016051905 | 9 |
2 | Singapore | 40201601536U | 9, 25, 35, 36, 38, 42 |
3 | India | 3178084 | 9, 25, 35, 36, 38, 39, 42 |
4 | Japan | 5893980 | 9, 25, 35, 36, 38, 42, 45 |
5 | Australia | 1747948 | 9, 25, 35, 36, 38, 39, 42 |
6 | New Zealand | 1036074 | 9, 25, 35, 36, 38, 42 |
7 | European Union | 015033211 | 9, 25, 35, 36, 38, 42, 45 |
8 | UK | UK00915033211 | 9, 25, 35, 36, 38, 42, 45 |
9 | Ukraine | 237328 | 9, 25, 35, 36, 38, 42 |
10 | Mexico | 1627591 | 9 |
11 | Brazil | 910576203 | 9 |
12 | USA | 5324610 | 9, 39, 38, 25, 36, 35, 42 |
13 | Kenya | 1090757 | 9, 25, 35, 36, 38, 39, 42 |
14 | Egypt | 329870 | 9 |
15 | UAE | 247964 | 9 |
How About Using Madrid System to Protect My Trademark Globally?
Some of you may have heard of the Madrid System, which is used for registering trademarks worldwide. Although it has been promoted as such, an application made under this system does not automatically grant protection in every country. The extent of protection depends on the individual countries you wish to cover, and the application in each country would still need to be examined by the respective government trademark offices. More importantly, it is only limited to the countries that have already signed up as members (which is now up to 130 countries). There are still some of the major markets not covered by the Madrid System, for example Taiwan.
Taking all of this into account, the Madrid System could be said to be a consolidation of multiple national filings. While its main advantages include time and costs savings, but the approval and protection still territorial based.
How To Choose Which Countries To Register In?
In making your decision, you might want to consider the following steps:-
Identify the countries which you are currently selling or plan to sell your goods/services.
Sort the countries according to priority and register your trademark based on the available budget and resources.
For the countries which are not covered as of now, do it as soon as you are ready so that protection in that country can be obtained soonest possible.
Ultimately, your trademark protection strategy should align with your business outlook. If you wish to know more, please don’t be shy and contact us! We are eager to help you out!
Written by,
Master of Laws LL.M (Hons)
Advocate & Solicitor of Malaya (Non-practising)
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from professionals.
© 2023 by IP Gennesis Sdn Bhd.
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