Market expansion is one of the most common strategies for growing and successful companies and SMEs. As mentioned, if you are looking to explore new markets, in other countries, you need to be cautious and take few steps to protect your IP rights abroad. In other words, ask yourself:

• Are you going to conduct business abroad?
• Are you going to export your products to foreign markets?
• Are you going to manufacture them in a foreign market?

If the answer to any of these questions is positive, then you need to protect your IPRs in ALL relevant countries, where you are intending to expand your business, before you actually enter those markets. Once again, please remember that IPRs are territorial by nature, and protect you only in the countries where you filed for protection (and not in others).

You also need to remember that TIME plays a crucial role in your efforts to obtain protection in other countries. While you can file applications for your trademarks in any country at any time (and in each country, your mark will be protected, if it passes the examination, as to the filing date in that particular territory), the situation is very different (and much more delicate) for patents and industrial designs. In the case of patents, you only have 12 months to file patent applications in other countries, from the moment you filed your first national application (in general in your home country). If you fail, the subsequent filings will be rejected, as devoid of novelty. Instead, if you comply with this 12-month deadline, your subsequent filings will be able to claim what is referred to as “priority” from your first filing, and their effects will be retroactive to the date of the earlier first filing. The situation is very similar for industrial designs, except that the period for extending your national application lasts only six months.

There are essentially three possible routes to protect a patent, an industrial design or a trademark³ in other countries, depending on where you are going to do business and how you wish to obtain protection:

The National Route

The national route (described in the previous Section) is available to anybody. However, it is only advisable in two cases:

• Either your business is limited to your home country and you don’t operate in other countries.
• Or the countries where you plan to do business and would like to obtain protection don’t belong to any of the regional or international systems described below.

If this is the case, you will have to appoint a local expert in each country to file a national application, complying with the requirements of the various domestic laws, and paying fees in the local currency. It is doable, but very time consuming, cumbersome and certainly more expensive. The national route is definitely not your best option if you intend to protect your IPRs in countries members to these regional or international registration systems.

The International Route

Let’s now look at the so-called international route for IPRs registration. There are three international registration systems administered by WIPO, namely:

• The Madrid system for the international registration of marks.
• The Hague system for the international registration of industrial designs.
• The Patent Cooperation Treaty (PCT) for international registration of patents.

These systems enable IPR owners to obtain protection in any country party to the relevant international treaty, by simply filing one application, in one language (including English), with one set of fees and in one currency (Swiss francs). Similar advantages exist when the registration has to be renewed or is assigned to a third party or when other changes, such as in name and/or address, have to be recorded.

In other words, these systems are a simple, economical and effective procedure that provides for:

• A centralized system for trademark, designs and patents filing and management in export market;
• A single set of simple formalities;
• Lower registration fees (including a reduction of fees for SMEs from LDCs);
• No need to translate the application into several languages;
• The effects of an international registration are equivalent to those of a national registration.

However, it is important to remember that the Madrid, The Hague and PTC systems are merely PROCEDURAL mechanisms to facilitate the filing process (i.e.: they only cover the FORMAL requirements that have to be complied with when filing an IPR). The domestic legislations of the designated Contracting Parties set the SUBSTANTIVE conditions for the actual granting of the protection of the various rights.

In general, it is recommended to seek professional advice before filing an application through one of the WIPO-administered international registration systems. For more information about the international route and the three registration systems administered by WIPO, please see: https://www.wipo.int/services/en/.

The Regional Route

While there are other regional systems to obtain registration of your IPRs in a group of countries (such as the OAPI system covering the 17 francophone African countries; the ARIPO system for all anglophone African countries, the ANDEAN Community system with one unique IP legislation for the following Latin American countries: Bolivia, Chile, Colombia, Ecuador and Perú, etc.), we will focus on the most integrated, complete and fully-fledged regional system which would enable you to protect your marks and designs in the 27 EU countries: the EU system, administered by the EUIPO.

The EU system can be used by anybody (natural or legal person), without restrictions as to nationality or state of incorporation. However, as non-European, you will have to appoint a representative in the EU to file your mark or design with EUIPO.

The cheapest and fastest way for filing your mark or design is to do it electronically. The form is extremely simple: you have to provide all relevant information relating to the IP owner, a sample of the mark and the goods and/or services covered by your mark classified in accordance with the Nice Classification; or images or representations of your designs indicating the relevant class/es of the Locarno Classification. In this context, please remember to use the tools we mentioned above (under “national route”): TMClass, and TM View; and ASEAN TMView, etc.

The EU system is completely integrated and in order to obtain your EU certificate, your mark or design need to be valid in all 27 countries. In other words, it is enough to have problems in one EU country (in terms of the availability of the mark or design), to obtain a full refusal by EUIPO, which will be applicable to all countries. For more information on the EU systems, please refer to: https://euipo.europa.eu/ohimportal/en.

[3] The situation is different for Copyright which is automatically protected as soon as you finish your creation.

 

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