What Business Owners Should Know about International Trademarks

Nancy Mertzel
Feb 27
3 min read

warner v nealy supreme court case — Photo by kumarsu6745 via Canva

Owners of US businesses may wish to consider international trademark protection for brands that have value beyond American borders, whether through potential sales, manufacturing, licensing or simply due to its recognition. Read on for an explanation of why international trademarks matter, the primary ways to protect trademarks abroad, and the importance of conducting trademark searches.

International Trademark Concepts

Trademarks rights are territorial, meaning they exist in the geographical location where protection is obtained. The United States grants trademark rights on a first-to-use basis (with the exception of intent-to-use applications). In contrast, most other countries follow a first-to-file system.

For US trademark owners, obtaining foreign trademark registrations can be invaluable for combating counterfeiting and strengthening brand presence. International protection can also prevent trademark hijacking (or squatting) and reduce the risk of being forced to rebrand when entering new markets.

To expand trademark rights internationally, a trademark owner may use multinational treaties such as the Madrid System or file directly with specific countries or regions, such as the European Union.

The Madrid System

The Madrid System is a multinational filing mechanism covering over 130 jurisdictions, administered by the World Intellectual Property Organization (WIPO).

After filing a trademark application or securing a registration in the home country, an applicant can file for an International Registration (IR) with WIPO and designate (“extend to”) selected countries. The IR does not itself grant trademark rights. Rather, WIPO acts as an intermediary that performs a formal review and forwards the application to each designated extension country for substantive examination. The Madrid System simplifies international filings by providing a single application, centralized management, and the potential to avoid hiring foreign counsel (unless there is an objection in a specific country).

Another key benefit is that through Madrid, a US trademark owner can extend its mark to the entire European Union with a single designation. If granted, an EU trademark provides protection across all EU member states. However, if a single country successfully objects, the application may need to be converted to national applications, which can be expensive. Note that when extending through Madrid, the goods and services cannot be expanded beyond those of the underlying US application/registration. Additionally, the IR is dependent on the underlying registration for five years after the IR issues.

Filing Directly with Countries and Regions

Alternatively, trademark owners may file directly in individual countries or regions, such as the EU or Benelux. Direct filing is required in countries outside the EU, including the United Kingdom, Switzerland, Norway and Iceland.

A significant benefit of filing directly is that you can broaden the description of goods and services beyond those listed in a US mark, since other countries may allow broader specifications than the US. Additionally, proof of use is usually not required to obtain a registration. Note however that trademark registrations can be cancelled later for non-use, often after three to five years depending on the jurisdiction.

When filing in countries where English is not the primary language or where non-Latin characters are used, such as Arabic, Korean and Japanese, it is generally advisable to translate and/or transliterate the mark. In Chinese, for example, marks may be translated phonetically, semantically (by meaning), or both. Proper localization avoids misinterpretations and culturally inappropriate meanings.

Trademark Searches

As in the US, conducting trademark searches in key countries or regions before filing can help identify conflicts and reduce the risk of refusal or infringement issues. Search practices and databases vary internationally, so working with experienced foreign counsel is advisable.

If you have questions about international trademarks or would like to discuss these issues, please feel free to contact us.