What it costs to do non-US trademark filings

Note: this page is written for a reader who is a US entity and who has already filed a trademark application in the US, and who is thinking about filing trademark applications outside of the US. Note further that the decisions faced by such an entity will rely upon particular facts, meaning that this page cannot possibly address one's actual detailed situation. Thus, anyone who faces decisions such as those described here is directed to obtain advice of competent trademark counsel who can take into account one's detailed situation. This page should not be taken as a substitute for legal advice from competent trademark counsel who are in possession of all of one's detailed facts. Reading this page does not create an attorney-client relationship with Oppedahl Patent Law Firm LLC.

Paris Convention six-month period. On the day that a US entity files a US trademark application, this starts a six-month period during which it is possible to file corresponding trademark applications outside of the US in countries that belong to the Paris Convention, each of which will be treated in its own country as if it had been filed on the date that the US application was filed. This often leads to a scramble, about five and a half months after the filing of the US application, to try to decide whether or not to spend money on trademark filings outside of the US. (At http://www.wipo.int/treaties/en/documents/pdf/paris.pdf you can see a list of the 169 countries that belong to the Paris Convention.)

A first thing to appreciate is that missing the six-month due date does not necessarily mean the applicant has lost any chance to obtain trademark protection outside of the US. It merely means that an application filed outside of the US will only enjoy its own filing date and will not enjoy the filing date of the US application. Because most countries outside of the US grant trademark registrations (among competing applications) based upon who filed first, it is of course greatly to one's advantage to get the earliest filing date, namely to file within the six-month period.

A second thing to appreciate is that not all the countries of the world belong to the Paris Convention. Taiwan does not belong, for example, nor does Thailand. So if one wishes to apply for trademark protection in any non-Paris-Convention country it is important to do it right away and not to rely upon the Paris six-month period. The remainder of this discussion assumes that one is not interested in trademark protection in non-Paris countries.

Filings outside of the US. The cost to file a trademark application outside of the US will be a function of the number of trademark classes included in the trademark application. It will also be a function of the general level of trademark fees in the country of interest, as well as the level of professional fees charged by trademark counsel in that country.

Assuming that only a single trademark class is involved, then on average the cost per country may be estimated at varying from around $1000 to around $3000. Filing in all Paris countries would cost well over $200,000. It is a rare US entity for whom a filing in all available countries would be justified.

One-stop shopping: Europe. There is a way to file a single trademark application directed to coverage in all of Europe. The application, called a "Community Trade Mark" application, is filed with the Office for Harmonization in the Internal Market (OHIM), sometimes colloquially referred to as "the European Trademark Office." The cost to file such an application, again assuming only one trademark class, may be estimated at around $2000, including government fees, fees to a European trademark firm, and fees to one's US trademark counsel.

There are several good reasons why one might choose to use a Community Trade Mark (CTM) rather than using a number of filings in particular countries in Europe. These reasons include the following:

With all of these advantages, why would one ever not use a CTM for European trademark protection? One factor to consider is that during the application process, a problem that arises in any particular country of Europe (for example, a prior trademark filing in a single country by some other party that blocks the later CTM application, or the filing of opposition by a third party located in one of the countries) will cause the entire CTM application to grind to a halt. When this happens, the applicant will have been better off filing individually in one or more countries of Europe so that each application could move forward independent of any problem in some other country of Europe.

One step that may help an entity to make an informed decision about using CTM or using individual filings is to have a professional trademark search performed that covers all of the EU countries. The results of the search may indicate that a CTM application is likely to fare well or may indicate that it is likely to run into a prior conflicting filing.

It is very desirable to file one's Community Trade Mark application within the six-month Paris period if possible. This will lead to the CTM application enjoying the benefit of the filing date of the prior US application.

There are many other factors that may affect one's choice of a CTM application on the one hand or a number of individual applications in European countries on the other hand. One should consult competent trademark counsel to evaluate all of those factors.

One-stop shopping: the world. The US belongs to a treaty called the Madrid Protocol. Under this treaty, a US national or domiciliary may file a Madrid Protocol trademark application ("international trademark application") which, if all goes well, leads to an International Registration ("IR"). The application designates one or more of the 67 trademark offices other than the US, that belong to the Protocol. In an automatic way, each designated Trademark Office then examines the application and, if all goes well, permits the IR to come into force in that Office. The Madrid Protocol mechanism offers several advantages:

Why would one not use the Madrid Protocol, given its many advantages? One factor is that there are many countries in which one might wish to file for trademark coverage, that do not belong to the Protocol. As of 2008, for example, Canada, Mexico, New Zealand, and India did not belong to the Protocol.

Another factor is that the MP application is required to identify its goods/services no more broadly than the identification listed in the underlying "basic" US application. Given that USPTO usually tries to force a US applicant to narrow its services substantially, this means that the IR will be no broader than the identification in the US application. Thus a US filer whose US trademark filing is not very broad might choose not to use Madrid but might instead simply file directly in the countries of interest.

To make the same point in different words, if one files directly in particular countries, rather than using MP based upon a US trademark filing, it is often possible to obtain extremely broad identifications of goods/services, for example covering all possible goods in a particular trademark class.

The cost to file a Madrid Protocol trademark application is a function of the number of trademark classes and is a function of the particular countries designated. The World Intellectual Property Organization offers a fee calculator to predict the government fees required for a particular Madrid Protocol filing. (When using this calculator, select "United States of America" as the Office of Origin.) As an example, a single-class application designating China ("CN"), Japan ("JP"), and a Community Trade Mark ("EM") would require a government fee of 3418 Swiss Francs (about $2766 in September of 2006). Fees of US trademark counsel may add another $500 or more to this amount.

WIPO also offers an International Application Simulator which is designed to show how to use the Madrid System to seek the protection of a mark. At the end of the simulation, it will also help estimate the cost of registering a mark through the Madrid System.

It is very desirable to file one's Madrid Protocol application within the six-month Paris period if possible. This will lead to the Madrid Protocol application enjoying the benefit of the filing date of the prior US application.

There are many other factors that may affect one's choice of a Madrid Protocol application on the one hand or a number of individual applications in various countries on the other hand. One should consult competent trademark counsel to evaluate all of those factors.

Filing a Madrid Protocol trademark application pro se. It is possible for an entity based in the US to file a Madrid Protocol trademark application pro se, that is, without hiring US trademark counsel. The application may be filed electronically or on paper. The United States Patent and Trademark Office has a detailed web page offering its perspective on the filing process.

There are advantages and disadvantages to filing a Madrid Protocol application pro se. The clear advantage is that one may be able to save the cost of hiring US trademark counsel. Disadvantages include the risk of substantive rights in one or more foreign countries if one files the application incorrectly or makes unwise choices during the filing process.

Choosing how to file in Europe. From the above discussion, it will be appreciated that there are four distinct approaches which one might follow for filings in Europe. These are:

  1. File individual applications in individual countries of Europe, through trademark counsel in those countries.
  2. File individual applications in individual countries of Europe, through the Madrid Protocol.
  3. File a European Union "Community Trade Mark" ("CTM") application that covers all of Europe, through trademark counsel in Europe.
  4. File a European Union "Community Trade Mark" ("CTM") application that covers all of Europe, through the Madrid Protocol.

An advantage to B or D is that if all goes well it might not be necessary to hire (and pay for) trademark counsel in the various countries involved. With A and C, on the other hand, there is no doubt that trademark counsel in Europe would need to be hired. A further potential advantage to B or D is that one might not need to hire US trademark counsel if one chooses to file pro se.

An advantage to A or B is that if things were to go badly in a particular country of Europe, that would not interfere with the applications in other countries of Europe. In contrast, with C or D if things were to go badly in any one country of Europe, that would put the entire Community Trade Mark application in jeopardy.

With A and C one could (if desired) file for sweepingly broad goods and services. In contrast, with B and D one is confined to the goods or services for which one had previously filed for in the US.

Regardless of the particular filing approach chosen, it is very desirable to file one's Community Trade Mark application or one's applications in individual countries of Europe within the six-month Paris period if possible. This will lead to the application enjoying the benefit of the filing date of the prior US application.

Choosing countries in which to file. Clearly one factor to consider is where one presently has customers. There is much to be said for getting a trademark registration in each country where one has a significant number of customers.

Another factor to consider is where one might some day have customers. If a particular country is a natural expansion market from the US, then it may make sense to file in that country merely to protect one's ability to use that mark in that country at a future time.

For some trademarks it may make sense only to file in places where English is spoken.

Countries differ from one to the next in the extent to which they have court systems that work well and take trademarks seriously. It may not be money well spent to obtain a trademark registration in a country that does not have much of a court system. Experienced trademark counsel may be able to assist in evaluating this factor.

Most popular foreign-filing destinations. In the experience of Oppedahl Patent Law Firm LLC, some of the most popular foreign-filing destinations for US applicants include Canada, the Office for Harmonization in the Internal Market (European Trademark Office), Japan, Australia, Mexico, China, and New Zealand.