Paris, March 10, 2021 – From its creation, or at the latest from the start of negotiations with foreign partners, overseas Trademark protection must be considered. It is now the turn of Pakistan to join the international trademark system as of May 24, 2021.
Given its wide geographical coverage and simplicity, this system is becoming more and more adapted to worldwide business development strategies.
Advising and assisting you to determine which trademarks to protect. The same trademark, its translation or its transliteration?
Deciding which markets, depending on foreseeable evolutions?
When to file? If protection for the same trademark is extended to another country within 6 months of the original filing, i.e. priority date, then any foreign filings benefit from the original filing date.
Together, we will select the most appropriate path depending on your trademark, prior rights and budget.
- National filing:
if the trademark is specifically for one country, or if a country is not a member of any regional agreements.
- International filing:
covering, in one single filing a large number of countries, including the European Union. The choice can be made among 108 member states/organizations covering 124 countries and representing 80% of world trade. It allows the addition of countries in relation with the economic expansion of your trademark. One single application using this system enables the registration, valid for 10 years and renewable through a single operation, of your trademark. However, the International registration remains subject to the laws of each designated country or territory. Additionally, a National or EU filing is required in order to proceed with the International filing.
for the 27 countries of the European Union since January 1, 2021. This system makes it possible to obtain a single registration after only one procedure carried out by EUIPO. Since the Brexit was definitively established, European trademarks registered on December 31, 2020 have given rise to a corresponding British trademark. For unregistered applications, it will only be necessary to file an identical British trademark to keep the same filing date.
- Filing with the OAPI – for Francophone African countries
It is now possible to cover the following countries through only one filing: Benin, Burkina Faso, Cameroon, Central African Republic, Congo, Ivory Coast, Gabon, Guinea, Guinea-Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, Chad, Togo, and Comoros. In the OAPI, it is appropriate to carry separate filings depending on whether it refers to products or services in its wording.
- Filing with the ARIPO – for Anglophone African countries
The ARIPO system exists and permits 11 of the 18 countries that signed the Banjul protocol to be designated, they are: Botswana, Lesotho, Liberia, Malawi, Mozambique, Namibia, Swaziland, Tanzania, Uganda, São Tomé and Príncipe and Zimbabwe, however it is really only effective in the underlined countries.
- Protection in the Andean Pact countries
Bolivia, Colombia, Ecuador, Peru: An agreement concerning these 4 countries alone, which allows a trademark holder registered in one of these countries to oppose an infringement filing in any of the other member countries of the pact and to be able to invoke the use or reputation of a trademark from one country in other countries.
- A trademark registration for the Eurasian Economic Union
This treaty signed on May 29, 2014 between 3 countries came into force on January 1, 2015. It has created a Union which currently includes Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. It establishes a harmonization between the systems of Intellectual Property rights and established a Union trademark system in force in all member countries which coexists with national trademarks.
- Our Network of Foreign Colleagues
We directly perform a number of operations before the French (INPI), EU (OHIM 3 (EUIPO)) and International (WIPO) offices. In other countries we operate via a network of foreign correspondents that we have selected due to their competence, responsiveness and price.
- Adapting the Protection of your Trademarks to your Markets
We propose reviewing the protection of each trademark depending on market expansion in order to adapt, as necessary, with each evolution, by conducting an audit of your trademarks, domain names, designs and patent portfolios.
The exploitation of trademarks is an indispensable condition for filing, maintaining and/or defending trademarks in a large number of countries. We assist our clients in verifying the conditions of use of your trademarks and the means of preserving proof of exploitation.
- Adapting the means of fighting counterfeiting to the extension of your trademarks and digitalization of the infringement
Your anti-counterfeiting policy should also be reviewed especially depending on your manufacturing and export markets, and may include watch services of trademarks, and Internet as well as customs retainer declarations,
Overseas protection of a trademark cannot be improvised but must be the subject
of a conscious strategy that is being constantly adapted in relation to the commercial development of the company, more particularly in an era of digital development.