RIGHTS OUTSIDE OF THE UNITED STATES
Comments are generalizations and may not apply to every
situation. It is advisable to consult with a competent professional before
relying on any written commentary. Paul D. Supnik is a member of the State
Bar of California and not of any other state or country. The material set
forth herein is not for the purpose of soliciting any engagements where
to do so would be to offend or violate the professional standards of any
other state, country or bar.
Copyright 1996 by Paul D. Supnik
Trademarks are territorial. Trademark rights derived from United States
trademark laws by themselves generally do not establish trademark rights
in other countries. Each country has its own trademark law. Although there
may be some generalizations made, accurate statements can only made by
looking at the law of particular countries.
A trademark application filed in the United States provides a basis for
filing in most countries of the world within six months thereafter while
maintaining the priority date of the United States filing. This is as a
result of the Paris convention, which preserves the home country filing
date so that the filing in a country outside of the United States is treated
as having been filed on the filing date in the home country.
While rights in some counties, particularly those based on the English
common law system, permit rights to be established by use of the mark without
registration, most counties in the world, particular those based on the
Code Napoleon, significantly base rights strictly on registration. Thus,
for example, registration or "deposit" of a mark is critical to establish
rights in a mark. Unlike the United States, use is not a requirement of
obtaining a registration in virtually every country in the world.
Even if use is not required to obtain a registration, many countries use
is a condition of maintaining a registration, and the failure to use a
mark within a period of time after registration, usually three years, renders
the mark vulnerable to a cancellation proceeding.
Once a mark has been registered in foreign countries, it must be renewed,
usually at intervals of 10 or 15 years (though there are some with different
Some commonwealth countries require registration of authorized users of
the mark in addition to registration of the mark.
There is no one international registration. Some rights may be acquired
in a region, such as the European Community Trademark. Some rights may
be acquired by means of the Madrid Arrangement. However, the United States
is not currently a member of this convention and unless the applicant has
a bonafide establishment in a Madrid Arrangement country, the Madrid Arrangement
cannot be used at the present time.
Most, but not all countries, have a schedule of identification of goods
and services in which marks are classified. Most countries have a charge
for their trademark applications based on the number of classes for which
registration is sought.
The definition of infringement may vary from country to country. Usually,
it is based on similarity of the marks. Some countries require that the
use be in connection with the same goods for which the mark has been registered.
Other countries do not make that a requirement for infringement and permit
that the infringement be in connection with goods that are similar or related.
Do not despair if there is no trademark infringement, because the
same results may possibly be obtained under some form of unfair competition
or passing off. However, the standards for achieving the result on these
basis may be much more difficult.
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Comments are generalizations and may not apply to every situation. Matter
included here or in linked websites may not be current. It is advisable
to consult with a competent professional before relying on any written
commentary. No attorney client relationship is established by the viewing,
use, or communication in any manner through this web site. Confidential
information should not be sent by e-mail or otherwise through the internet.
It may not be secure, may lose its confidential character and may lose
its ability to be protected by the attorney-client privilege. Paul D. Supnik
is a member of the State Bar of California and not of any other state or
country. The material set forth herein is not for the purpose of soliciting
any engagements where to do so would be to offend or violate the professional
standards of any other state, country or bar. This web site Copyright 1996
by Paul D. Supnik
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Attorney at Law