If a company wants to protect its brand beyond the borders of its home country, there are three main strategies to choose from:
national trademark registrations in the respective countries,
the International Registration via the Madrid System (WIPO) and
the EU-wide EU-trademark (EUIPO).
Each of these protection strategies has specific advantages and disadvantages – they can also be combined. The choice of the appropriate strategy depends on a variety of factors and requires an assessment in each individual case. Below, the most important advantages and disadvantages of the various strategies are outlined for guidance.
National trademark registrations in the desired countries
One option is to register national trademarks with the trademark offices of those countries where protection is needed. For an Austrian company, this means: If it wants to protect its brand in the GAS-region, it registers, in addition to its Austrian trademark, a national trademark in Germany and Switzerland.
Advantages:
Tailored protection: National individual registrations are particularly a good alternative when only a few foreign markets are relevant. One applies for trademark protection in the needed countries and pays only for that.
Independence of trademarks: Each national registration stands on its own. Problems or conflicts in one country do not affect trademark protection in other countries. Unlike the EU-Trademark, for example, a conflict with an older trademark in a specific country may only lead to the failure of the application there, while the trademarks in other countries remain unaffected. National trademarks are therefore less easily contested than EU-Trademarks.
Disadvantages:
Higher efforts: A separate application process must be completed for each target country (often in the local language and possibly with a local representative). This means more bureaucracy and administrative effort.
Costs: Several national trademark registrations can quickly cost more in total than an EU-Trademark registration. Managing multiple individual trademarks (renewals, monitoring, etc.) is more cumbersome and incurs additional costs in each country.
Limited reach: A national trademark only offers protection in the respective country.
International registration via the Madrid System (WIPO)
The Madrid System theoretically allows for trademark protection in over 130 countries with a single application. The prerequisite for this is a so-called basic/base trademark – for Austrian companies, this means an already registered or filed Austrian trademark or EU-Trademark (application). Based on an Austrian trademark, an Austrian company can submit an application to the Austrian Patent Office, which is forwarded to WIPO. In this application, the applicant selects the contracting states where protection is sought, and WIPO records the trademark in the international register. Afterwards, the respective designated countries examine whether there are any obstacles to protection according to their national regulations.
Advantages:
Wide coverage with one application: Through the Madrid System, a trademark can be registered internationally with just one application. This saves time and costs since it does not need to be filed individually in each country (usually no translations or local representatives required for each application).
Flexible choice of countries: The applicant determines which countries or regions should be covered. Unlike the EU-Trademark (which automatically includes all EU states), one can specifically indicate only those countries that are genuinely relevant – including non-EU countries such as Switzerland, the United Kingdom, or the USA. Further countries can be added later.
“Bundle” of individual national rights: Although it is a central application, the international registration is like a bundle of national trademark rights that are largely independent of one another. If the trademark is rejected in a designated country or protection is denied due to a conflict with an older right, the trademark protection in the other selected countries still remains intact. Thus, one does not lose all international protection, but only the affected country.
Easier administration: Extensions or changes (changes of ownership, address changes, etc.) can be made centrally. This simplifies trademark management and is usually significantly cheaper than separate renewals for national registrations.
Disadvantages:
Dependency on the basic trademark: In the first five years, the International Registration is tied to the fate of the basic trademark. If the basic trademark is cancelled during this time or the protection is revoked in opposition proceedings, the International Registration also ceases to exist in all countries (so-called "central attack"). In such a case, it is possible to convert the international registration into national applications within a certain period. However, this involves additional efforts and costs.
Country-specific examination: Each country examines the trademark according to its own law. If there are objections or oppositions in some countries, one must deal with the national office language and procedures there – often involving local lawyers. While International Registration saves separate applications in several countries, any rejections require individual solutions for each country.
Not all countries covered: Although the Madrid System covers over 130 countries, some states are (still) not contracting parties. In such countries, direct national applications would still need to be filed.
EU-Trademark
The EU-Trademark offers trademark protection in all member states of the EU with just one single application. The competent authority is the European Union Intellectual Property Office (EUIPO) in Alicante. A successful EU-Trademark application grants the owner an exclusive trademark right in currently 27 EU countries simultaneously. The protection also automatically extends to future EU member countries without requiring a new application.
Advantages:
EU-wide coverage: With a single registration, one obtains trademark protection throughout the entire European Union. This is practical if a company operates or plans to operate in several EU countries beyond Austria. One does not have to apply separately for each country.
Centralized procedure: The application is made in one language (e.g., German) directly at the EUIPO. There is only one register, one procedure, one office. This eliminates multiple national procedures. The renewal or management of the trademark is also significantly simplified, as only one trademark needs to be maintained for all EU countries.
Cost savings (with broad usage): The fees for a EU-Trademark (from about €850) cover all 27 countries. Compared to the sum of individual national fees, this is usually cheaper already in the case of three countries. Only a single renewal fee is due every ten years. Thus, one receives comprehensive protection across the EU for low cost.
Automatic expansion: As the EU grows, the area of protection automatically increases. When new countries join the EU, the EU-Trademark also enjoys protection there without further action.
Disadvantages:
"All or nothing" principle: The registration of a EU-Trademark requires that it is capable of protection in all member states. If there is an absolute obstacle to protection in one EU country (e.g., the trademark is considered descriptive there) or it conflicts with an older right, the EU-Trademark application fails or a cancellation request can be successfully made. It is enough for a confusingly similar older trademark in one individual EU state to bring down the entire Union trademark application. Although there is the possibility of conversion into national trademark applications (for those countries where no objections exist), the already paid fees are lost and additional costs arise for individual countries.
In other words: Since the EU-Trademark has an effect in many countries, theoretically more holders of older rights can file oppositions. The likelihood of a conflict increases with geographical reach. While for national trademarks one only competes with older rights of the respective country, with a Union trademark one must consider all existing rights – which makes research and risk assessment more complex and much more expensive.
Conclusion
The choice of the right strategy for the internationalization of one’s brand largely depends on the company's expansion plans and priorities. Particularly important in choosing the strategy is the "conflict situation" – that is, what older rights exist in which country.
ZEMANN IP is happy to advise and support your company in choosing the right strategy. Please feel free to contact us.
