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The advantages of protecting my trademark internationally

  • 09 June 2014
  • Articles

If you are thinking of registering your trademark and you are uncertain whether to do so nationally or internationally, let me explain some of the advantages of international registration compared to national.

Filing of trademarks. It is more expensive to file national trademarks that international ones. When applying for various national trademarks, the costs are considerably higher than the cost of one international trademark designating the same countries.
Scope of protection. The protection provided by national registration is exactly the same as that of international registration.
Greater control of the trademarks portfolio. The registration and maintenance of an international registration can be handled entirely by Clarke, Modet & Co without the participation of representatives in the countries concerned. The only exceptions are designations that undergo a provisional rejection during the examination procedure. This makes it possible to monitor the situation of each designated country in real time using a WIPO online database instead of sending a query to each representative. There is only one renewal date for all the designated countries instead of needing a representative in each country to monitor multiple national renewal dates.
Descriptions of specific products/services for each designated country. When filing an international trademark, the statement of goods or services can be restricted country by country as desired to meet local requirements. An international application must be based on an application/registration in the country of origin. Given that both the Spanish Patent and Trademark Office (SPTO) and the Community Trademark Office (OHIM) accept very broad descriptions, we generally use the broadest base application/registration and include the specific restricted statements in the international application for countries such as the USA, which require greater detail.
Renewals. When the international trademark is renewed, only one renewal application needs to be made instead of an independent renewal application for each country. (It is possible to renew an international trademark partially for some of the designated countries only.) Obviously, renewing one international trademark is much more profitable than renewing various national trademarks.
Transfers/licenses. The changes in the ownership of an international registration can be registered easily in all or some of the designated countries by submitting an application form that is processed with few formalities. The same applies to licenses. Recording a change of ownership of a national registration at any time can cost as much as the filing of a new application and this cost is multiplied by the number of countries involved. The difference in costs between the international and national systems is therefore evident.
The most commercially important countries in the world are members of the international trademarks system.

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The advantages of protecting my trademark internationallyThe advantages of protecting my trademark internationally