Your business crosses borders—whether through e-commerce, international franchises, manufacturing exports, or cloud-based services. Protecting your trademark in multiple countries requires strategic decisions about where to file and which filing system to use. This chapter compares all international filing options to help you build cost-effective global trademark protection.
Why International Filing Matters
Many businesses serve international customers from day one. E-commerce stores ship worldwide, SaaS platforms have global user bases, restaurants expand through international franchises, manufacturers export products, and professional services firms open offices across multiple countries.
Trademark rights are territorial—your US registration only protects you in the United States. If a competitor registers your brand name in Canada, the EU, or Japan before you do, you'll have no legal basis to stop them. You could be forced to rebrand in those markets or negotiate expensive buyouts.
International filing isn't just defensive—it's a strategic asset. Registered trademarks in key markets enable you to:
- Prevent brand confusion: Stop competitors from copying your brand identity
- Enforce platform policies: Amazon, Alibaba, and app stores require registered trademarks for brand protection programs
- Expand confidently: Enter new markets knowing your brand is legally protected
- Build brand value: International trademark portfolios increase company valuation
- Enable licensing: Generate revenue by licensing your brand to international partners
The question isn't whether to file internationally—it's where to file and which system to use.
No Worldwide Trademark Exists
Critical Principle: There is no such thing as a "worldwide trademark" or "international trademark" that protects you everywhere. Every trademark right is limited to specific countries or regions where you've registered.
Trademark protection is territorial. A trademark registration gives you rights only in the country or region where it's granted. This fundamental principle shapes all international filing strategy.
What this means in practice:
- US trademark: Protects only in United States and territories
- EU trademark (EUTM): Protects in all 27 EU member states (but not UK, Switzerland, Norway)
- UK trademark: Protects only in United Kingdom (separate from EU since Brexit)
- International registration via Madrid: Protects only in countries you specifically designate
Each trademark office examines applications independently according to local law. A mark that's easily registered in the US might be refused in China. A mark that's descriptive in English might be distinctive in Japan.
You must file separate applications in each country or region where you need protection. The only question is which filing mechanism to use: direct national filings, regional systems, or the Madrid Protocol.
Direct National Filings
Filing directly with each country's national trademark office is the most straightforward approach. You submit an application directly to the USPTO (US), CIPO (Canada), UKIPO (UK), CNIPA (China), JPO (Japan), or any other national office.
Advantages of Direct Filing
Maximum control: You work directly with each trademark office and can optimize your application for local requirements.
No dependency risks: Each application is independent. If one fails, others are unaffected.
Local expertise: You can hire local trademark attorneys who understand jurisdiction-specific nuances.
Faster in some cases: Some offices process direct filings faster than Madrid Protocol designations.
Strategic flexibility: You can file different marks, different classes, or different timing in each country based on market priorities.
Disadvantages of Direct Filing
Higher costs: Application fees, attorney fees, and translation costs multiply across countries.
Separate management: Each registration has its own renewal deadlines, maintenance requirements, and recordation procedures.
Different requirements: You must comply with varying filing requirements, specimen standards, and use requirements for each country.
Language barriers: Applications must be filed in local languages (Chinese for China, Japanese for Japan, etc.).
Coordination complexity: Tracking multiple applications across different jurisdictions requires robust docketing systems.
When to Use Direct Filing
Direct national filing makes sense when:
- Filing in 1-3 countries: Cost-effective for small geographic coverage
- Countries not in Madrid Protocol: Some important markets aren't Madrid members
- Specific market strategies: Different marks or classes needed for different markets
- Immediate filing needed: No time to wait for base application/registration
- High-value markets: Major markets where you want maximum control and local expertise
Direct filing is the default approach for businesses protecting their brand in just one or two key markets beyond their home country.
Regional Trademark Systems
Regional systems allow you to file one application that covers multiple countries. These systems are more cost-effective than filing individually in each member country.
European Union Intellectual Property Office (EUIPO)
The EU trademark (EUTM) is the most important regional system for most businesses.
Coverage: All 27 EU member states with one application
Member states include: Germany, France, Italy, Spain, Netherlands, Poland, Belgium, Sweden, Austria, Ireland, Denmark, Finland, Czech Republic, Portugal, Greece, Hungary, Romania, Bulgaria, Croatia, Slovakia, Lithuania, Slovenia, Latvia, Estonia, Cyprus, Luxembourg, Malta
Cost: €850 base fee (covers first class) + €50 (second class) + €150 (each additional class)
Timeline: 4-6 months standard; 4 months with Fast Track (using Harmonised Database terms)
Use requirement: None at filing, but you must use the mark within 5 years or face revocation
Key advantage: 450 million consumers covered by one registration at reasonable cost
Important note: UK is NOT included (Brexit). Switzerland, Norway, and Iceland are NOT EU members and require separate filings.
Other Regional Systems
| Regional System | Coverage | Member Countries | Key Details |
|---|---|---|---|
| OAPI (African Intellectual Property Organization) | 17 Francophone African countries | Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo | Single application covers all member states; French language; important for African expansion |
| ARIPO (African Regional Intellectual Property Organization) | 19 Anglophone African countries | Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Somalia, Sudan, Eswatini, Tanzania, Uganda, Zambia, Zimbabwe | Designated countries system; English language; complements OAPI for comprehensive African coverage |
| Benelux (BOIP) | 3 European countries | Belgium, Netherlands, Luxembourg | Integrated system; cost-effective for these three markets; €240 for 10 years |
| GCC (Gulf Cooperation Council) | 6 Gulf countries | Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, United Arab Emirates | Single application; Arabic language; important for Middle East markets |
Strategic Note: Regional systems are most valuable when you need protection in multiple countries within the region. Filing an EUTM costs €850 for 27 countries—vastly more economical than 27 separate national applications.
EUTM Advantages and Considerations
All-or-nothing nature: An EUTM registration covers all 27 EU countries automatically. However, if your application is refused based on objections in even one country, the entire EUTM can be refused.
Conversion option: If your EUTM application is refused or challenged, you can convert it to national applications in countries where protection is possible, maintaining your original filing date as the priority date.
Opposition from anywhere: Anyone in any EU country can oppose your EUTM based on earlier rights in their country. A small shop in Bulgaria with an earlier similar mark could block your EUTM for all 27 countries.
Use requirement: You must use your EUTM in at least one EU member state within 5 years. Use anywhere in the EU satisfies the requirement for all 27 countries.
The EUTM is ideal for businesses serving European customers, whether through e-commerce, physical presence, or digital services.
Madrid Protocol System (Overview)
The Madrid Protocol is a centralized international filing system administered by the World Intellectual Property Organization (WIPO). It allows you to file one international application designating multiple countries (130+ available).
How Madrid Protocol Works (High-Level)
- Base application required: You must have a trademark application or registration in your home country (your "base mark")
- File international application: Through your national office (USPTO, EUIPO, etc.), file one application designating which countries you want protection in
- WIPO processes and forwards: WIPO examines your application and forwards it to each designated country
- National examination: Each designated country examines your application according to their national law
- National protection: If approved, you receive protection equivalent to a direct national filing
Chapter 14 covers the Madrid Protocol in complete detail, including costs, procedures, timelines, and the critical "central attack" dependency issue.
Madrid Protocol Key Features
One application, multiple countries: File once through WIPO instead of filing separate applications in each country.
Centralized management: Renewals, changes of ownership, and address updates can be recorded centrally at WIPO.
Cost-effective for 4+ countries: Madrid becomes more economical than direct filing once you're protecting your mark in approximately four or more countries.
Requires base mark: You must have an existing application or registration in your home country that serves as the foundation for your international registration.
5-year dependency: Your international registration depends on your base application for the first five years. If your base mark is refused or canceled during this period, your entire international registration can fall (though you can convert to national applications).
When Madrid Makes Sense: If you need trademark protection in 4 or more countries that are Madrid Protocol members, the centralized system typically saves both money and administrative complexity compared to direct national filings.
Cost Comparison: Direct vs Regional vs Madrid
Understanding the cost structure of each filing approach is essential for budget planning and strategic decision-making.
Filing Cost Examples
| Countries Needed | Direct National Filing | Regional/Madrid Approach | Estimated Savings |
|---|---|---|---|
| 1 country | $250-500 (one national office) | N/A (direct filing is only option) | — |
| 3 countries (e.g., US, UK, Canada) | $750-1,500 ($250-500 × 3 countries) | Madrid: $1,000-1,400 (base + 3 designations) | Minimal savings |
| 5 countries (e.g., US, UK, Germany, France, Spain) | $2,500-3,500 ($500 × 5 countries) | EUTM + US + UK: $1,200-1,500 (EU covers 27 incl. Germany, France, Spain) | 40-50% savings |
| 10 countries (mix of US, EU, Canada, Australia, Japan, China, etc.) | $5,000-10,000 ($500-1,000 × 10 countries) | Madrid: $2,500-5,000 (base + 10 designations) | 50% savings |
| 27 EU countries | $13,500-27,000 ($500-1,000 × 27 countries) | EUTM: €850 ($920) (single EU trademark) | 95% savings |
Notes on cost calculations:
- Direct filing costs include government fees only (not attorney fees)
- Madrid costs include basic fee (CHF 653) + supplementary/individual fees per country
- EUTM cost is €850 base + €50 (2nd class) + €150 (3rd+ classes)
- Attorney fees typically add $500-2,000 per application depending on jurisdiction
- Translation costs for non-English countries add $100-500 per application
Total Cost of Ownership
Filing fees are just the beginning. Consider ongoing costs:
Maintenance and renewals: Each jurisdiction has its own renewal schedule and fees. The Madrid Protocol simplifies this—one renewal covers all designated countries.
Monitoring: You should monitor for conflicting applications in every jurisdiction where you have rights. Multi-jurisdiction monitoring through APIs is more cost-effective than hiring local counsel in each country.
Enforcement: If you must enforce your trademark against infringers, legal costs vary dramatically by jurisdiction (US litigation is expensive; EU enforcement is more predictable).
Local representation: Some countries require local trademark agents or attorneys, adding $200-1,000+ per application.
Priority Rights and the Paris Convention
The Paris Convention for the Protection of Industrial Property is an international treaty that gives you a critical strategic advantage: the six-month priority window.
How Priority Rights Work
When you file a trademark application in any Paris Convention member country (virtually all countries), you have six months to file in other member countries while claiming your original filing date as your priority date.
Example scenario:
- March 1, 2025: You file trademark application in the US (USPTO)
- April 15, 2025: Competitor files same trademark in Germany
- July 20, 2025: You file in Germany (within 6-month window) claiming US priority
- Result: Your German application claims priority of March 1, 2025—before the competitor's April 15 filing. You have the earlier priority date.
Strategic Uses of Priority Rights
Phased budget planning: File in your home country now, then evaluate which other countries to file in over the next six months.
Market testing: Launch in your home market first, test market response, then expand international protection based on actual business traction.
Competitive protection: Establish your priority date in your home country quickly, preventing competitors from filing first in other jurisdictions while you prepare international applications.
Cost management: Spread filing costs over two budget periods—home country in Q1, international filings in Q2.
Pro Tip: File your trademark application in your primary market as early as possible to establish your priority date. This gives you six months to strategically expand to other countries without losing your priority position.
Paris Convention Priority Requirements
To claim priority, you must:
- File first application in a Paris Convention member country
- File subsequent applications within 6 months of your first filing date
- Claim priority when filing subsequent applications (include your first application's filing date and country)
- File for same mark: The mark in subsequent applications must be the same as your original filing
- Cover same or narrower goods/services: You can narrow your goods/services in subsequent filings, but not expand beyond your original application
Priority claims are automatic for Madrid Protocol applications based on a national filing within the six-month window.
Key Jurisdictions by Market Size
Not all markets are equally important. Strategic international filing focuses on jurisdictions that matter most for your business model and target customers.
Major Trademark Jurisdictions
| Jurisdiction | Market Size | Population | Base Filing Cost | Timeline | When to File |
|---|---|---|---|---|---|
| United States | Largest economy | 335M | $250-350/class | 12-18 months | Essential for any business serving US customers |
| European Union | 27 countries | 450M | €850 base | 4-6 months | Essential for businesses serving European customers; excellent value |
| China | 2nd largest economy | 1.4B | ¥300 (~$45) | 9-12 months | Critical if selling in China or manufacturing there; high trademark squatting risk |
| United Kingdom | Post-Brexit separate | 68M | £170-200 | 4-6 months | Important for UK market (not covered by EUTM since 2021) |
| Japan | 3rd largest economy | 125M | ¥12,000 (~$85)/class | 10-14 months | Important for APAC expansion; sophisticated market |
| Canada | English-speaking market | 39M | CAD 335-400 | 12-18 months | Natural expansion from US; relatively easy process |
| Australia | English-speaking market | 26M | AUD 250-330 | 7-10 months | Important for APAC English-speaking market |
| India | Fastest-growing economy | 1.4B | ₹4,500 (~$55)/class | 18-24 months | Emerging market priority; English language advantage |
| Brazil | Largest Latin American market | 215M | BRL 355 (~$70) | 18-30 months | Key for Latin America expansion |
| South Korea | Tech-savvy market | 52M | ₩62,000 (~$50) | 10-12 months | Important for tech/digital businesses in APAC |
Business-Type Filing Priorities
Different business models require different international strategies:
E-commerce (global shipping)
- Priority 1: US, EU, UK (major markets)
- Priority 2: Canada, Australia (English-speaking, easy logistics)
- Priority 3: Japan, South Korea (APAC markets)
SaaS and Digital Services
- Priority 1: US, EU (largest digital markets)
- Priority 2: UK, Canada, Australia (English-speaking markets)
- Priority 3: India, Brazil (emerging tech markets)
Manufacturing and Exports
- Priority 1: US, EU (major import markets)
- Priority 2: China (manufacturing base protection)
- Priority 3: Markets where you export products
Restaurant and Franchising
- Priority 1: Home country
- Priority 2: Countries with active franchise discussions
- Priority 3: Regions with expansion plans (file before opening)
Professional Services
- Priority 1: Home country + neighboring countries
- Priority 2: Countries where you have offices or employees
- Priority 3: Markets with active client relationships
Phased International Filing Strategy
Most businesses can't afford to file in every jurisdiction simultaneously. A phased approach balances budget constraints with strategic protection.
Three-Year Phased Expansion Example
| Phase | Timeline | Jurisdictions | Cost Range | Strategic Rationale |
|---|---|---|---|---|
| Phase 1: Foundation | Year 1, Q1 | Home country (e.g., US) | $250-500 | Establish priority date; protect primary market; create base for Madrid |
| Phase 2: Core Markets | Year 1, Q2-Q3 | EU, UK, Canada | $1,500-2,000 | Cover major markets within 6-month priority window; significant customer bases |
| Phase 3: APAC Expansion | Year 2 | Australia, Japan, Singapore | $1,200-1,800 | Expand to Asia-Pacific English-speaking and major markets |
| Phase 4: Emerging Markets | Year 2-3 | India, Brazil, Mexico | $800-1,200 | Protect emerging markets before competitors; growing customer bases |
| Phase 5: Defensive Filing | Year 3+ | China, South Korea, additional markets | $500-1,500 | Prevent trademark squatting; complete global protection |
Budget Planning: Phased filing allows you to spread costs over multiple budget cycles while maintaining strong protection in your most important markets. Use your home-country priority date to secure your position globally.
Filing Triggers
Rather than filing on a fixed timeline, consider filing based on business milestones:
Revenue triggers: File in a new country once revenue from that market exceeds a threshold (e.g., $50K annual revenue)
Market entry triggers: File 6-12 months before actively marketing or selling in a country
Competitor triggers: File defensively if competitors are active in a market, even if you're not there yet
Partnership triggers: File before signing distribution, licensing, or franchise agreements in a country
Platform expansion triggers: File before launching on country-specific platforms (Amazon.co.uk, Alibaba, etc.)
Evaluating Geographic Priorities
Ask these questions to prioritize which countries need trademark protection:
- Where are your customers? Protect markets with significant customer bases or revenue
- Where do you operate? Protect countries where you have offices, employees, or physical presence
- Where might you expand? File before expansion, not after
- Where are competitors active? File defensively in competitive markets
- What are platform requirements? Amazon, app stores, and other platforms require local registrations
- What are partnership needs? Distributors and licensees expect registered trademarks
- What are squatting risks? China and some other markets have high trademark squatting risks—file early
Budget Considerations for International Filing
International trademark protection requires realistic budget planning. Costs vary dramatically based on how many countries you need and which filing system you use.
Startup Budget Strategy (Limited Resources)
Priority: Protect what you have now, plan to expand later
- Year 1: File in home country only ($250-500)
- Year 1-2: Monitor for conflicts in key international markets (low cost)
- Year 2: Add 1-2 critical markets once revenue justifies the investment ($500-1,500)
- Year 3+: Expand protection as business grows and revenue increases
Advantages: Minimal upfront investment; establishes priority date; flexible expansion
Risks: Competitors could file in unprotected markets; must act within Paris Convention priority window or re-file
Scale-Up Budget Strategy (Growing Business)
Priority: Protect core markets immediately, expand strategically
- Year 1: File in home country + 2-3 major markets ($1,500-3,000)
- Example: US + EU + UK or US + Canada + Australia
- Year 2: Add 3-5 additional markets using Madrid Protocol ($2,000-4,000)
- Year 3: Complete coverage in all active markets ($2,000-5,000)
- Ongoing: Defensive filings in new markets as you expand
Advantages: Strong protection in major markets quickly; manageable cost spread over time
Risks: Moderate upfront investment; some markets may remain unprotected temporarily
Enterprise Budget Strategy (Comprehensive Protection)
Priority: Comprehensive global protection from day one
- Year 1: File via Madrid Protocol in 10-15+ countries ($5,000-10,000)
- Use Madrid for efficiency and centralized management
- Ongoing: Add new markets as business expands
- Ongoing: Monitor all jurisdictions for conflicts
- Ongoing: Maintain comprehensive portfolio
Advantages: Maximum protection; prevents squatting; enables confident global expansion
Risks: High upfront investment; significant ongoing management and renewal costs
Cost Management Best Practices
File strategically, not comprehensively: You don't need trademark protection in every country—only in markets where you do business or plan to expand.
Use regional systems: Filing one EUTM (€850) is vastly cheaper than filing in 27 individual EU countries.
Leverage Madrid Protocol: For 4+ countries, Madrid Protocol is almost always more cost-effective than direct national filings.
Claim priority: Use the Paris Convention six-month priority window to spread costs across budget periods.
DIY where possible: Some jurisdictions (like the US) allow you to file without an attorney. Complex jurisdictions benefit from local expertise.
Monitor before filing: Use low-cost or free monitoring in potential markets. File only when business justification exists.
Delete unused classes at renewal: Don't pay to renew trademark classes you're not actually using.
Return on Investment (ROI)
Trademark protection generates tangible returns:
- Prevents costly rebranding: Catching conflicts early saves $50,000-500,000+ in rebranding costs
- Enables platform protection: Amazon Brand Registry, app store protections, and ad platform verifications require registered trademarks
- Increases valuation: Comprehensive trademark portfolios increase company valuation in M&A scenarios
- Enables licensing revenue: You can license your trademark to partners in countries where it's registered
- Reduces enforcement costs: Registered trademarks make cease-and-desist enforcement faster and less expensive
- Builds brand equity: Protected brands compound value over time
Trademark protection is not an expense—it's an investment in your business's brand value and competitive position.
Making the Right Filing Decision
Choosing between direct filing, regional systems, and Madrid Protocol depends on your specific circumstances.
Decision Framework
File directly when:
- You need protection in only 1-3 countries
- You need maximum control and local expertise
- The country is not a Madrid Protocol member
- You want strategic flexibility (different marks or classes per country)
- Time is critical and you can't wait for a base application
Use regional systems (EUIPO, OAPI, ARIPO, GCC) when:
- You need protection in multiple countries within the region
- The region represents a cohesive market for your business
- Cost-effectiveness is a priority
- You want simplified management for the region
Use Madrid Protocol when:
- You need protection in 4+ countries
- Most of your target countries are Madrid Protocol members
- You want centralized management for renewals and changes
- You already have (or will soon have) a base application or registration
- You accept the 5-year central attack dependency risk
Combine approaches when:
- Some target countries aren't Madrid members (e.g., file direct in those)
- You need immediate protection in critical markets (file direct) while expanding globally via Madrid
- Different business units need different marks in different regions
Common Filing Combinations
| Business Scenario | Recommended Approach | Estimated Cost |
|---|---|---|
| US startup entering Europe | US direct + EUTM | $1,100-1,200 |
| EU business entering US market | EUTM + US direct | $1,100-1,200 |
| Global e-commerce platform | Madrid Protocol (designate US, EU, UK, Canada, Australia, Japan, etc.) | $3,000-6,000 for 8-10 countries |
| Manufacturing exporter | Direct filing in home country + key export markets | $1,500-3,000 for 3-5 countries |
| SaaS company (global from day 1) | Madrid Protocol after securing home country registration | $2,500-5,000 for 6-10 countries |
| Restaurant franchise expansion | Direct filing in each country as franchises open | $500-1,000 per country (phased) |
Frequently Asked Questions
International Filing Basics
Cost and Strategy
What's Next: Deep Dive into Madrid Protocol
Now that you understand all international filing options and can make strategic decisions about which approach fits your needs, Chapter 14 provides a complete guide to the Madrid Protocol system. You'll learn the step-by-step filing procedure, exact cost calculations for different country combinations, how to manage the critical 5-year central attack dependency, and when Madrid is (and isn't) the right choice for your international trademark strategy.