International Trademark protection strategy
If you wish to use your trademark abroad, it is essential to establish a strategy to ensure that it is both effectively protected and impactful in the local market.
After studying the target markets, it is necessary to consider whether using the same sign in all countries is appropriate. Would market entry be facilitated by transliteration or translation of the trademark? Does the proposed sign meet the validity requirements of the target country’s intellectual property office? Is the proposed sign available? These preliminary questions and searches are essential to ensure the secure and effective exploitation of the trademark.
Several trademark protection methods are available. Each option has advantages and disadvantages, and associated costs may vary considerably from one option to another.
The European Union procedure: EU Trademarks
If you wish to protect your trademark within the European Union, you may file an EU Trademark application with the European Union Intellectual Property Office (EUIPO). This allows you to obtain unitary protection across all EU Member States through a centralized filing and examination procedure.
Benefits of EU Trademark registration
- Unitary protection: One registration covers all 27 EU Member States
- Cost-effective: More economical than filing separate applications in multiple individual countries
- Centralized management: Single renewal and maintenance procedure
- Language flexibility: File in any of the EU’s official languages
- Priority right: Six-month priority period from first filing
The international procedure: Madrid system
The International Trademark System, administered by the World Intellectual Property Organization (WIPO), allows trademark protection to be extented to multiple countries that are members of the Madrid System, based on a national trademark filing. A single international application may be filed with WIPO, designating the countries protection is sought.
However, it is important to note that each designated country has the right to individually examine and approve the application, and therefore verifications and prior art searches should be conducted for each target country.
Madrid Protocol key features
- Base application requirement: a home country filing or registration is required
- Territorial scope: Covers over 130 countries and territories
- Dependency period: Five-year link to base application
- Centralized renewal: Single renewal covers all designated countries
- Individual examination: Each designated country may refuse protection
The national procedure: individual national filings
This option involves filing a trademark registration application in each country where protection is sought. It requires meeting the specific requirements of each country’s intellectual property office in terms of filing, procedures, and costs. This may be a strategic solution if you are targeting a limited number of countries.
When national filing is preferred
- Non-Madrid countries: Countries not part of the Madrid System
- Use-based jurisdictions: Countries requiring evidence of use (e.g., USA)
- Strategic markets: When an intensive local presence and monitoring are required
- Language considerations: For trademarks requiring translation or transliteration
- Faster registration: Avoiding Madrid System’s dependency period
The priority right: strategic timing advantage
Regardless of the option chosen, it is possible, after an initial filing in France, to refine your international trademark filing strategy during the following six months.
Indeed, during this period, the applicant has a priority right, allowing the extention of trademark protection for the same goods or services aborad, by legal fiction, from the date of the French trademark filing.
Maximizing the Priority period
The six-month priority period provides valuable time to:
- Conduct comprehensive market research in target jurisdictions
- Perform detailed prior art searches in each country
- Assess cultural appropriateness and linguistic considerations
- Determine budget allocation for international protection
- Select optimal filing strategy (Madrid vs. national)
Comparative analysis: choosing the right strategy
| Criterion | EU Trademark | Madrid System | National Filings |
| Geographic Scope | 27 EU countries | 130+ countries | Any country |
| Cost Efficiency | High for EU | Medium to High | Varies by country |
| Processing Time | 4-6 months | 12-18 months | Varies by country |
| Flexibility | Limited (all-or-nothing) | High (selective designation) | Maximum |
| Best For | EU-focused businesses | Multi-country expansion | Strategic markets |
Working with international partners
The DE BAECQUE BELLEC firm works with a network of international partners to support you in these foreign trademark protection procedures and explain the procedural specifics of different offices.
Our global network ensures:
- Local expertise in target jurisdictions
- Cultural and linguistic accuracy
- Coordinated global filing strategies
- Cost-effective multi-jurisdictional protection
- Comprehensive portfolio management
Stéphane Bellec, Partner
Intellectual Property Attorney
Email: sbellec@debaecque-avocats.com
Tel: +33 (0) 1 53 29 90 00