So, you have a new trademark and you’ve just applied to register it in the United States. But the USA is just the beginning.  You have a big vision.  You plan to take your brand global.  The question arises: in which countries is it most urgent for you to apply for trademark registration?

First Factor: Which are Your Most Important Global Markets?

You can’t begin to decide in which countries to apply for registration of your mark  until you know which countries you want to provide your goods or services in.  But once you have that figured out, it’s time to strategize. In which countries is registration most important? The answer depends, at least in part, on the legal system of each country. Trademark rights in the USA are determined by common law, which is derived originally from England.  Under common law you obtain trademark rights by using your trademark.  You may register your trademark to enhance your rights, but the rights are created by use, not by registration, and the first to use the mark would have priority over a later user even if such later user were the first to file an application for registration. But many countries, particularly those that do not have significant English influence in their history or culture, are governed by civil law. In a civil law system it’s all about who is the first to file for registration, because in such jurisdictions trademark rights do not emanate from use, but rather are based exclusively on filing.  Thus, in a civil law jurisdiction, filing an application for registration is the only way to establish trademark rights (with certain exceptions for “well-known” marks).

Second Factor: Which of Your Most Important Markets are Civil Law Jurisdictions?

You need to know the answer to this question. Because if your plans include using your trademark in any civil law countries you would be well advised to apply for registration in such countries as soon as possible, after conducting a trademark clearance search to determine whether your mark is available.   Because in a civil law country, only registration affords you rights to the trademark, and if another party applies to register your mark first, you may be out of luck. Some notable countries that follow the civil law system include France, China, Spain, Brazil, Japan and the Netherlands.

Conclusion

Do your research, or get your trademark attorneys to do their research, and determine which of your target markets are civil law jurisdictions.  Then conduct the appropriate searches and apply to register your mark in those civil law jurisdictions, preferably before your six month priority window based on your U.S. filing has passed. You can worry about common law jurisdictions after you have taken care of the civil law countries, because in common law countries, once you have searched to establish your mark is available, you can begin to establish rights through use, and apply for registration a little later if need be. This strategy may be particularly helpful if your trademark budget does not allow you to apply for registration in all of your intended markets at once. If you need to prioritize, consider applying in civil law countries first.

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About Thomas Wilentz, Trademark Lawyer

Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.