Trademark systems vary significantly across jurisdictions, from filing requirements to examination procedures to maintenance obligations. Understanding these critical differences helps you avoid costly mistakes and navigate multiple trademark offices successfully. This chapter compares the major trademark jurisdictions worldwide.
United States (USPTO)
The United States operates a unique use-based trademark system with specific requirements that differ from most other countries.
Use Requirement
The USPTO requires actual use of the trademark in interstate or international commerce. You have two filing options:
| Filing Basis | Requirements | When to Use |
|---|---|---|
| Use in Commerce (1(a)) | Actual use in commerce before filing Specimen required at filing Date of first use required | You're already selling goods or providing services across state lines |
| Intent to Use (1(b)) | Bona fide intent to use within 3-4 years Specimen required later (Statement of Use) Additional fees for Statement of Use | You've selected a mark but haven't launched yet |
First-to-Use Priority: Unlike most countries, the US grants trademark rights based on who used the mark first in commerce, not who filed first. However, federal registration still provides critical advantages.
Maintenance Requirements
US trademark registrations require periodic proof-of-use filings:
| Deadline | Filing Required | Fee per Class | Proof Required |
|---|---|---|---|
| Years 5-6 | Section 8 Declaration of Use | $225-525 | Specimen showing current use |
| Years 9-10 | Combined Section 8 & 9 (Declaration + Renewal) | $425-625 | Specimen showing current use |
| Every 10 years thereafter | Combined Section 8 & 9 | $425-625 | Specimen showing current use |
Grace Periods Are Expensive: Miss the primary filing window and you'll pay additional fees during the 6-month grace period. Miss the grace period entirely and your registration is cancelled—you must refile from scratch.
Examination Process
- Timeline: 12-18 months typically
- Opposition Period: 30 days after publication (extendable to 120 days)
- System: First-to-use (common law rights recognized)
- Attorney Requirement: Not required for US-based applicants
Key Characteristics
- Strong examination for likelihood of confusion with existing marks
- Extensive specimen requirements (proof must show mark used in commerce)
- Trademark Trial and Appeal Board (TTAB) for oppositions and cancellations
- Incontestability available after 5 years of continuous use
- Cost: $250-350 per class
European Union (EUIPO)
The EUIPO offers a single registration covering all 27 EU member countries through a registration-based system.
Registration-Based System
No use required to file or register. However, genuine use is required within 5 years of registration or the mark becomes vulnerable to cancellation for non-use.
| Feature | Details |
|---|---|
| Coverage | All 27 EU countries with one application |
| Cost | €850 base fee (1 class) €50 for 2nd class €150 for 3rd+ classes |
| Timeline | 4-6 months (Fast Track: 4 months) |
| Opposition Period | 3 months after publication (non-extendable) |
| Renewal | Every 10 years |
| Use Requirement | None to file; required within 5 years to maintain validity |
Fast Track Option
The EUIPO Fast Track program accelerates registration to approximately 4 months if you:
- Use only pre-approved terms from the Harmonised Database (HDB)
- Pay the application fee upfront
- Submit all required information at filing
Fast Track Advantage: Using terms from the Harmonised Database ensures acceptance in the classification phase and qualifies you for expedited examination. This can reduce your registration timeline by 25-35%.
Examination Process
- Formalities Check: 2 weeks to verify complete application
- Absolute Grounds Examination: 2-3 months to check distinctiveness, descriptiveness
- Publication: 3-month opposition window begins
- Registration: If no opposition filed or opposition rejected
Key Characteristics
- One registration = 27 countries: Extremely cost-effective for European coverage
- No relative grounds examination: EUIPO doesn't search for conflicting marks; relies on opposition by third parties
- Conversion option: If EUTM fails, convert to national applications in specific countries
- Representation: EEA residents can file directly; non-EEA applicants must use a representative
- SME Fund: 50% reimbursement available for small businesses in some cases
United Kingdom (UKIPO)
Following Brexit in 2021, the UK trademark system separated from the EUIPO, creating distinct filing requirements.
Post-Brexit Changes
| Aspect | Pre-Brexit (Until 2020) | Post-Brexit (2021+) |
|---|---|---|
| EU Coverage | EUTM covered UK automatically | UK excluded from new EUTM filings |
| Existing Marks | EUTM valid in UK | Automatically cloned to UK registration (free) |
| New Filings | One EUTM = EU + UK | Must file separately with UKIPO |
| Priority | EUTM priority recognized | Separate UK priority date |
Transition Benefit: If you had an existing EUTM or pending EUTM application before Brexit, you automatically received an equivalent UK trademark registration at no cost. However, all new filings require separate UK applications.
UK System Characteristics
- Cost: £170-200 per class (significantly cheaper than EUTM)
- Timeline: 3-4 months typically
- Opposition Period: 2 months after publication
- System: Registration-based (similar to EUIPO)
- Renewal: Every 10 years
- Use Requirement: Similar to EU (required after 5 years)
Strategy Implications
For UK market protection, you now need:
- Option 1: EUTM (covers 27 EU countries) + separate UK application
- Option 2: Individual national filings if UK is your only market
- Cost: EUTM (€850) + UK (£170) = approximately £900-1,000 total for EU + UK coverage
Canada (CIPO)
The Canadian trademark system shares similarities with the US but includes important differences.
Key Features
| Aspect | Details |
|---|---|
| Use Requirement | Actual use or proposed use acceptable |
| Classification | Nice Classification (international standard) |
| Timeline | 12-18 months typically |
| Opposition Period | 2 months after publication (extendable) |
| Renewal | Every 10 years |
| Attorney Requirement | Not required for Canadian residents |
Similarities to US
- Use in commerce required (though "proposed use" acceptable at filing)
- English/French language options (bilingual country)
- Examination for likelihood of confusion
- Common law rights recognized
Differences from US
- Longer opposition period (2 months vs 30 days)
- Different fee structure
- Separate maintenance timeline
- Nice Classification system (US uses USPTO classification)
Australia (IP Australia)
Australia operates a registration-based system with some unique characteristics.
Key Features
- Use Requirement: Intent to use acceptable at filing
- Timeline: 7-10 months typically
- Opposition Period: 2 months after acceptance (before registration)
- Cost: Approximately AUD 250-330 per class
- Renewal: Every 10 years
- Examination: Substantive examination for all grounds
Notable Characteristics
- Similar to US system but registration-based
- Accepts intent-to-use applications
- Clear opposition window before registration
- English-language filing
- No attorney requirement for Australian residents
China (CNIPA)
China's first-to-file system creates unique challenges and strategic considerations.
First-to-File System
Trademark Squatting Risk: China operates a strict first-to-file system with no use requirement. Bad actors frequently register Western brands before legitimate companies enter the market. If someone files your mark before you do, you may have limited recourse.
Key Features
| Aspect | Details |
|---|---|
| System | First-to-file (race to register) |
| Use Requirement | None to file or register |
| Timeline | 9-12 months typically |
| Opposition Period | 3 months after preliminary approval |
| Renewal | Every 10 years |
| Language | Chinese required (plus optional transliteration) |
Strategic Considerations
- File Early: Register in China as soon as you consider the market, even if years away from entry
- Chinese Characters: Consider registering both English name and Chinese character version
- Multiple Classes: File broadly to prevent squatters from registering in adjacent classes
- Watch Services: Monitor for squatting attempts in your name or similar variations
Language Requirements
- Primary filing language: Chinese (Simplified)
- Transliteration options for foreign brands
- Consider registering: English name + Chinese characters + transliteration
Japan (JPO)
Japan operates a registration-based, first-to-file trademark system with specific procedural requirements.
Key Features
| Aspect | Details |
|---|---|
| System | First-to-file (no use requirement initially) |
| Timeline | 10-14 months typically |
| Opposition Period | 2 months after publication |
| Renewal | Every 10 years |
| Use Requirement | Use required for renewal after 3 years |
| Language | Japanese (translations provided by agents) |
Notable Characteristics
- Substantive examination for distinctiveness and conflicts
- Use required for renewal (proves mark is in active use)
- Katakana registration common for foreign brands
- Local agent required for non-residents
- Similar cost structure to other Asian jurisdictions
Comparative Summary Tables
Use Requirements Comparison
| Jurisdiction | Use Required to File? | Use Required to Register? | Use Required to Maintain? |
|---|---|---|---|
| United States | Yes (or bona fide intent) | Yes (must show use) | Yes (Sections 8 & 9) |
| European Union | No | No | Yes (within 5 years) |
| United Kingdom | No | No | Yes (within 5 years) |
| Canada | No (proposed use ok) | Yes (before registration) | Yes |
| Australia | No (intent ok) | Not immediately | Yes |
| China | No | No | No |
| Japan | No | No | Yes (after 3 years) |
Opposition Periods Comparison
| Jurisdiction | Opposition Period | Extendable? |
|---|---|---|
| United States | 30 days | Yes (up to 120 days) |
| European Union | 3 months | No |
| United Kingdom | 2 months | Yes |
| Canada | 2 months | Yes |
| Australia | 2 months | Yes |
| China | 3 months | No |
| Japan | 2 months | Limited |
Cost Comparison (Single Class)
| Jurisdiction | Base Cost (Approx.) | Multi-Class Discount? |
|---|---|---|
| United States | $250-350 | No (per-class pricing) |
| European Union | €850 (27 countries) | Yes (€50 for 2nd, €150 for 3rd+) |
| United Kingdom | £170-200 | Standard per-class |
| Canada | CAD 330-450 | No |
| Australia | AUD 250-330 | No |
| China | CNY 300-600 (~$50-100) | No |
| Japan | JPY 12,000-20,000 (~$80-140) | No |
Timeline Comparison
| Jurisdiction | Typical Timeline | Fast Track Available? |
|---|---|---|
| United States | 12-18 months | No |
| European Union | 5-6 months | Yes (4 months) |
| United Kingdom | 3-4 months | No |
| Canada | 12-18 months | No |
| Australia | 7-10 months | No |
| China | 9-12 months | No |
| Japan | 10-14 months | No |
Language Requirements
Filing trademarks in non-English jurisdictions requires understanding language requirements and translation considerations.
Primary Language Requirements
| Jurisdiction | Official Filing Language | Translation Required? | Agent Required? |
|---|---|---|---|
| United States | English | No | No (for US residents) |
| European Union | Any EU language | Translated by EUIPO | No (for EEA residents) |
| United Kingdom | English | No | No (for UK residents) |
| Canada | English or French | No | No (for Canadian residents) |
| Australia | English | No | No (for Australian residents) |
| China | Chinese (Simplified) | Yes | Recommended |
| Japan | Japanese | Yes | Yes (for non-residents) |
Translation Considerations
- Chinese: Register both English and Chinese character versions for comprehensive protection
- Japanese: Katakana registration common for foreign brand names
- EU: File in any EU language; EUIPO translates to all 24 official languages
- Costs: Professional translation services typically $50-200 per application
Local Representation Requirements
Many jurisdictions require or recommend local trademark agents for non-residents.
Attorney/Agent Requirements by Jurisdiction
| Jurisdiction | Agent Required? | Who Needs Agent? | Typical Cost |
|---|---|---|---|
| United States | No | Optional for all | $1,000-3,000+ if hired |
| European Union | Yes (for non-EEA) | Applicants outside EU/EEA | €500-2,000+ |
| United Kingdom | No | Optional for all | £500-1,500+ if hired |
| Canada | No | Optional for all | CAD 1,000-2,500+ if hired |
| Australia | No | Optional for all | AUD 800-2,000+ if hired |
| China | Strongly recommended | Non-residents | $500-1,500+ |
| Japan | Yes | Non-residents | $800-2,000+ |
When to Hire Local Counsel: Even when not required, consider hiring local agents for:
- Complex applications (multi-class, non-traditional marks)
- Jurisdictions with language barriers
- Office action responses requiring legal arguments
- Managing large international portfolios
Common Pitfalls by Jurisdiction
Understanding jurisdiction-specific mistakes helps you avoid costly errors.
United States
- Missing Use Requirements: Filing 1(a) without proper specimens leads to refusal
- Specimen Errors: Website screenshots often rejected for goods; must show mark on actual products or packaging
- Missing Deadlines: Section 8 and 9 deadlines are strict; missed deadlines = cancelled registration
- Overly Broad Descriptions: USPTO frequently issues identification of goods/services refusals
European Union
- Assuming Relative Grounds Examined: EUIPO doesn't search for conflicts; you must conduct your own clearance
- All-or-Nothing Risk: If EUTM is opposed successfully in one country, entire 27-country registration can fall (but conversion option available)
- Use Requirements Misunderstood: Five-year genuine use required or mark vulnerable to cancellation
United Kingdom
- Forgetting Separate Filing Post-Brexit: Many applicants assume EUTM still covers UK
- Overlooking UK Market Size: UK represents significant market; don't skip separate filing if serving UK customers
China
- Filing Too Late: Trademark squatters register Western brands before legitimate owners enter market
- Insufficient Coverage: Filing only in one or two classes; squatters register in adjacent classes
- Ignoring Chinese Characters: Western brands need Chinese character registration for comprehensive protection
Canada
- Confusing with US System: Similar but not identical; different forms, fees, and procedures
- Language Selection: Must choose English or French; affects official correspondence
Australia & Japan
- Underestimating Timeline: Longer than UK/EU; plan accordingly for product launches
- Missing Local Requirements: Specific specimen and description requirements differ from US/EU standards
Decision Framework: Which Jurisdictions to File In
Choosing jurisdictions depends on business strategy, budget, and market priorities.
Priority 1: Core Markets (File Immediately)
File in jurisdictions where you:
- Currently have customers
- Generate significant revenue
- Plan to launch within 6-12 months
- Face competitive threats
Typical Priority 1: Home country + primary international markets
Priority 2: Strategic Markets (File Within 12 Months)
File in jurisdictions where you:
- Plan expansion within 1-2 years
- See emerging market opportunities
- Want to block competitors
- Anticipate future revenue
Typical Priority 2: Secondary markets with Paris Convention priority from home filing
Priority 3: Defensive Filings (File When Budget Allows)
File in jurisdictions where you:
- May expand long-term (3+ years)
- Want to prevent squatting (especially China)
- See brand protection value
- Have sufficient budget
Budget Allocation Strategy
| Business Stage | Recommended Jurisdictions | Approximate Budget |
|---|---|---|
| Early Startup | Home country only | $250-850 |
| Growing Business | Home country + 1-2 key markets | $1,500-3,000 |
| Scale-up | Home + major markets (US, EU, UK) | $2,000-4,000 |
| Enterprise | Comprehensive global coverage | $10,000-50,000+ |
Frequently Asked Questions
System Differences
Use Requirements
Costs & Strategy
What's Next
You understand the critical differences between major trademark jurisdictions—from use requirements to opposition periods to costs. Now that your marks are registered, you need systems to protect them. Chapter 16 covers trademark monitoring and enforcement strategies to defend your rights against infringement and unauthorized use.