Our clients often ask us to register their trademark all over the world.
Is it possible? Yes it is, of course, but it does not exist a single registration which protects the brand everywhere. It is necessary to proceed with an international trademark registration with whom, with a single registration, you can choose the States in which you can protect your trademark or with a national filing in the States of your interest.
If you have had the opportunity to read other articles in this blog of mine you have learned that the effectiveness of the brand is territorially limited and there exist multiple possibilities of protection to be carefully evaluated with your legal advisor.
That said, let’s see which considerations must be done when you want to register your trademark all over the world.
The question that arises is:
Are there any rules which can be considered valid everywhere?
Yes there are, in principle.
Some legal requirements of the trademark must exist almost anywhere for a brand to be valid. Among these the most common are:
- The distinctive capacity: the mark cannot consist of generic names of the product or service or in descriptive indications referring to them;
- The novelty: the mark must not be identical or similar to an earlier trademark for identical or similar products or services, if there a risk of confusion for the public
- The lawfulness: the trademark cannot be contrary to law, public order and morality.
The respect of these 3 requirements in all countries of the world entails a huge difficulty in identifying a unique naming! In fact, the same word can have different meanings in different languages and cultures. For example, a word having a positive meaning in Italia, could be negative in Spanish language!
If you want to deepen the subject read this article taken from Focus.it in which they are told some cases of wrong product brands!
Another frequent and equally common rule is the mandatory use of the trademark, after a number of years varying from the registration date (usually three or five years).
The principle of limiting trademark protection to the products/services claimed is also omnipresent: this means that in the application for registration is always necessary to indicate which products and/or services will be distinguished by the mark and the legal protection of your brand will be referred only to those products and/or services.
A provision that you can expect to find anywhere is referred to the duration of the brand and the need to renew it periodically if you want to keep it alive: the brand usually (but not always) has a duration of ten years, starting from the date of filing or registration and that can be renewed for periods of ten more years and potentially indefinitely, in case you want to keep the protection.
We have only talked about some provisions concerning the nature of the brand and its legal protection: there are many other rules to know and many factors to be evaluated before registering your brand, in relation to what are your specific protection needs.
We therefore suggest you to speak to your consultant before proceeding with the registration of your brand.