TRADEMARK RIGHTS OUTSIDE OF THE UNITED STATES
by Paul D. Supnik
Comments are generalizations and may not apply to every situation. It is advisable to consult with a competent professional before relying on any written commentary. Paul D. Supnik is a member of the State Bar of California and not of any other state or country. The material set forth herein is not for the purpose of soliciting any engagements where to do so would be to offend or violate the professional standards of any other state, country or bar.

Copyright 1996 by Paul D. Supnik

  1. Trademarks are territorial. Trademark rights derived from United States trademark laws by themselves generally do not establish trademark rights in other countries. Each country has its own trademark law. Although there may be some generalizations made, accurate statements can only made by looking at the law of particular countries.
  2. A trademark application filed in the United States provides a basis for filing in most countries of the world within six months thereafter while maintaining the priority date of the United States filing. This is as a result of the Paris convention, which preserves the home country filing date so that the filing in a country outside of the United States is treated as having been filed on the filing date in the home country.
  3. While rights in some counties, particularly those based on the English common law system, permit rights to be established by use of the mark without registration, most counties in the world, particular those based on the Code Napoleon, significantly base rights strictly on registration. Thus, for example, registration or "deposit" of a mark is critical to establish rights in a mark. Unlike the United States, use is not a requirement of obtaining a registration in virtually every country in the world.
  4. Even if use is not required to obtain a registration, many countries use is a condition of maintaining a registration, and the failure to use a mark within a period of time after registration, usually three years, renders the mark vulnerable to a cancellation proceeding.
  5. Once a mark has been registered in foreign countries, it must be renewed, usually at intervals of 10 or 15 years (though there are some with different time intervals).
  6. Some commonwealth countries require registration of authorized users of the mark in addition to registration of the mark.
  7. There is no one international registration. Some rights may be acquired in a region, such as the European Community Trademark. Some rights may be acquired by means of the Madrid Arrangement. However, the United States is not currently a member of this convention and unless the applicant has a bonafide establishment in a Madrid Arrangement country, the Madrid Arrangement cannot be used at the present time.
  8. Most, but not all countries, have a schedule of identification of goods and services in which marks are classified. Most countries have a charge for their trademark applications based on the number of classes for which registration is sought.
  9. The definition of infringement may vary from country to country. Usually, it is based on similarity of the marks. Some countries require that the use be in connection with the same goods for which the mark has been registered. Other countries do not make that a requirement for infringement and permit that the infringement be in connection with goods that are similar or related.


    10. Do not despair if there is no trademark infringement, because the same results may possibly be obtained under some form of unfair competition or passing off. However, the standards for achieving the result on these basis may be much more difficult.
     
     

    Disclaimer


    Paul D. Supnik
    Attorney at Law