Protecting your trademark internationally: which route to choose

A trademark is protected only in the territories covered by its registration. That is the territoriality principle: a US federal registration gives you nothing in Germany, Brazil or Japan. A third party can file an identical or similar sign in those countries, lawfully, and own the right there before you do.

So for a company going international, the question is not “should I protect my trademark abroad?” but “through which route, in which territories, and in what order?”. Four routes coexist. They are not mutually exclusive, and in practice they are usually combined.

The groundwork: territoriality and convention priority

Two rules shape every international trademark strategy.

Territoriality. Each trademark right is granted by an office, for a given territory, under a national law. There is no such thing as a worldwide trademark. Even the Madrid system, commonly called “the international trademark”, does not create a single title: it produces a bundle of national protections managed through one centralised procedure.

Unionist Priority. The Paris Convention grants a six-month period from the date of the first filing to extend protection to other member states while retaining, for the goods and services in question, the priority date of the initial filing. Thus, a trademark filed with the INPI on March 10 may be filed in the United States until September 10 by claiming this priority. Subject to the applicable conditions, applications filed by third parties during this period cannot take precedence over the application benefiting from priority. An extension remains possible after the six-month period expires, but it will be tied to its own filing date.

Those 6 months are strategic: they let you test a market or run a trademark prior art search in the target territories before committing to extension costs.

Route 1: national filing (INPI and equivalent offices)

Principle. The application is filed directly with the relevant national office, such as the INPI in France, the DPMA in Germany, or the JPO in Japan. The application is examined in accordance with local law, following the linguistic and procedural requirements of the country in question, and results in the grant of an independent national trademark.

Scope. A national application protects the trademark in a single country. In most systems, registration is valid for ten years and may be renewed indefinitely in successive ten-year periods.

Advantages. This approach offers great flexibility. The description of goods and services can be tailored to the practices of the local office, thereby reducing the risk of objections and aligning protection more precisely with the business activities carried out in that country. Each registration remains legally independent of the other filings.

Limitations. Costs and administrative burdens increase with the number of countries targeted. Each office applies its own rules, deadlines, fees, and language requirements and, in many cases, requires the appointment of a local representative. Beyond a few territories, portfolio management quickly becomes more complex.

Who is it for? This route is suitable for companies focused on one or two clearly identified markets, as well as those that wish to protect their trademark in a country not covered by a regional system. It also often serves as the starting point for an international strategy, as the initial filing can serve as the basis for a priority claim in other territories.

Route 2: the European Union trademark (EUIPO)

Principle. A single filing with the EUIPO results in a single trademark covering all Member States of the European Union. The procedure is centralized: a single application, a single language of filing, and a single registration.

Scope. The European Union trademark is effective in all Member States, including those that join the Union after its registration. It is protected for ten years and may be renewed indefinitely for successive periods of ten years.

Advantages. This approach offers a particularly attractive cost-to-coverage ratio when targeting multiple European markets. Genuine use in a sufficiently significant part of the Union may, depending on the circumstances, allow protection to be maintained without the need for use in every Member State.

Limitations. The unitary nature of the trademark is both its greatest strength and its greatest vulnerability. An absolute ground for refusal applicable in part of the Union or an opposition based on a prior right valid in a single Member State can prevent registration throughout the entire territory. Conversion to national applications remains possible in Member States not affected by the obstacle, but this entails additional formalities and costs.

Who is this for? This approach is suitable for companies that already operate across Europe or plan to do so. A thorough prior art search is therefore essential, as a prior right limited to a single Member State may be enough to jeopardize the entire application.

Route 3: the Madrid system (WIPO)

Principle. The Madrid System, administered by WIPO, allows for the protection of a trademark in multiple countries through a single international application. It requires a basic trademark that has been filed or registered with the office of origin. Each designated country then examines the application in accordance with its own law.

Scope.The system currently covers 117 members covering 133 countries. New territories may be added later through subsequent designation. Registration is valid for ten years and is renewed centrally.

Advantages. Administration is simplified: a single procedure allows for the centralization of renewals and certain amendments, including changes to the name, address, or owner.

Limitations.For five years, the international registration depends on the basic trademark. If the basic trademark is refused, canceled, or restricted, the international designations are affected to the same extent. Conversion to national applications remains possible, but it incurs costs in each country. The wording may also lead to provisional refusals in the most stringent jurisdictions.

Who is it **for?**Companies targeting several markets with a solid basic mark, ideally already registered. Tracking response deadlines for provisional refusals, country by country, justifies a trademark portfolio management tool from the first multi-designation onwards.

Route 4: direct foreign filing

Principle. You file directly with the foreign office, bypassing the Madrid system. In the United States, applications are filed with the USPTO in English, generally through an attorney admitted to the U.S. bar.

Scope. Direct filing results in a national title. In the United States, federal registration covers the entire U.S. territory.

Advantages. This approach allows the wording, filing basis, and response strategy to be tailored to local requirements. In the United States, this customization is particularly useful: the wording is scrutinized closely, use is a key factor, and evidence must be submitted at various stages. A designation via the Madrid System adopts the wording of the basic trademark, which may prove to be too broad or insufficiently precise. Furthermore, the national registration remains independent of the basic trademark.

Limitations. The cost per country is higher, the use of a local agent is generally necessary, and management is handled separately from the rest of the portfolio.

Who is it for? This approach is suitable for companies that consider a market strategic enough to warrant a tailored approach. A hybrid strategy is common: direct filing in priority countries and the Madrid System for secondary markets.

Comparison table

How to choose for your situation

You sell in two European countries. We recommend the filing of an EU trademark: the cost is close to two national filings, coverage is far wider, and new member states are picked up automatically.

US startup raising a round, targeting Europe then Asia. We recommend the filing with the INPI or the EUIPO, then proceed with the designation of the United States through the Madrid system within the priority period if the budget is limited, or a direct filing with the USPTO if the U.S. market is the primary focus. However, the validity of the base trademark must be verified, since any challenge to it during the dependency period may affect the international designations.

One market accounts for 60% of your export revenue. We recommend the filing directly, whatever the cost

General rule. Secure the basic mark first, then extend: a fragile base, filed without a clearance search, weakens everything built on it for 5 years.

Frequently asked questions

Does an “international trademark” actually exist? No, not in the sense of a single worldwide title. The Madrid system centralises the procedure and the administration, but protection remains a bundle of national rights. Every designated office keeps the power to refuse the mark on its territory.

Can I designate the United States through the Madrid System? Yes. The United States is a member of the Madrid Protocol, and a designation for the United States is processed by the USPTO. It remains subject to U.S. law, including requirements for declaration and proof of use after registration, and the wording derived from the basic trademark is frequently deemed too broad.

What happens if my basic mark falls after 3 years? The international registration is cancelled, along with every designation. You then have a window to request transformation of each designation into a national application, keeping the date of the international registration. It works, but it is expensive: that is the main argument for a solid basic mark.

Conclusion

There is no universally superior strategy, but rather a balance to be struck between the target markets, the development timeline, and the available budget: the European Union trademark for European coverage, the Madrid System for extended protection and centralized management, direct filings in strategic markets, and national filings for isolated territories. In most cases, the most appropriate solution involves a combination of these different approaches.

The main challenge begins next. An international portfolio involves renewals on different dates, provisional refusals that must be addressed within strict deadlines, a five-year dependency period that must be monitored, and amendments that must be reflected across numerous designations. IPzen centralizes these deadlines and formalities in a single environment to ensure the long-term consistency and effectiveness of the chosen protection strategy.

Book a demo and see how to run your international portfolio without letting anything slip.

Official sources: – USPTO: filing basis – USPTO: inbound Madrid protocol applicants – EUIPO: trade marks – WIPO: Madrid system