As businesses expand globally, protecting intellectual property becomes increasingly vital. The World Intellectual Property Office (WIPO) offers a streamlined process for trademark registration through the Madrid Protocol, commonly known as an “international trademark registration system.” However, misconceptions persist regarding the use of trademark symbols and the implications of international registrations. A common query arises among trademark holders who obtain international registrations: Should the ® symbol be used on their logo?
The short answer is no. The ® symbol should not be used until a national registration is secured. Moreover, it should only be employed in countries where the mark holds national registration. Using the ® symbol prematurely, especially in jurisdictions like the United States, can lead to legal complications such as accusations of false declarations and unfair competition. Instead, the “TM” symbol may be used to denote a trademark.
Understanding international registrations
An international registration under the Madrid Protocol differs from a national registration. WIPO’s system simplifies the process by allowing a single application to cover multiple countries. However, it is crucial to recognize that this international registration does not confer the same rights as national registrations.
The process
A WIPO application must originate from a national application in a member country. WIPO assigns an international registration number once the application is validated and distributes it to designated countries. Each country then evaluates the application based on its national laws. Only upon acceptance and registration by these countries does the applicant secure rights in each jurisdiction.
Clarifying confusion
Some countries maintain the same international registration number, while others issue additional application and registration numbers. It is important to note that international registration merely confirms compliance with WIPO’s standards and facilitates the application process; however, it does not grant legal rights.
The importance of national registrations
While international registration is a crucial step in obtaining trademark protection globally, it does not replace national registrations. National registrations (obtained either via a WIPO application or directly at the national trademark office)[1] are essential for enforcing trademark rights in specific jurisdictions.
Conclusion
Understanding the nuances of international trademark registrations and proper symbol usage is essential for businesses operating across borders. While the Madrid Protocol offers convenience, it is imperative to proceed with caution and ensure compliance with national regulations. For further clarification or assistance with trademark filings, it is advisable to consult with legal experts specializing in intellectual property law.
[1] For more information on international filing strategies, please see our previous article entitled “Filing for Trademark Protection Internationally.”
