1 registration for 114 member states and 130 territories: Mauritius island will join the international trademark system

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 MAURITIUS ISLAND to join the international trademark system as of May 6, 2023 which will strengthen protection of trademarks in Central America.

Given its wide geographical coverage and simplicity, this system has become increasingly adapted to worldwide business development strategies and global trademark portfolios.

Our expertise:

  • 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

Which path to take?

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 114 members states/organizations covering 130 countries and representing more than 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.
  • EU 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 which has to be renewed apart from the European one.
  • 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. The OAPI can be designated in the frame of the International registration.
  • Filing with the ARIPO – for Anglophone African countries: The ARIPO system permits 13 of the 22 countries that signed the Banjul protocol to be designated, but is really effective in the underlined countries : Botswana, Cape Verde, Eswatini, Gambia,  Lesotho, Liberia, Malawi  , Mozambique, Namibia, Tanzania, Uganda, São Tomé and Príncipe and Zimbabwe.
  • Protection in the Andean Pact countries – Bolivia, Colombia, Ecuador, Peru: An agreement concerning these 4 countries alone, 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: The initial 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 an harmonization between the national systems of Intellectual Property rights which still coexist and established a Union trademark system in force since April 26, 2021 with a simplified filing in one country valid in all member countries.

Our Network of Foreign Colleagues

We directly perform a number of operations before the French (INPI), EU (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.

Use of your trademarks

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 watching as well as customs retainer declarations. Please note that Kenya from 1 January 2023 requires thatbrand owners register with the Kenyan Anti-Counterfeit Authority (ACA) trade marks that are applied to goods that are imported into Kenya.

To keep in mind

La protection à l’étranger d’une marque ne s’improvise pas et doit faire l’objet d’une stratégie réfléchie qui doit être adaptée en permanence à l’expansion économique, et géographique de chaque entreprise ainsi qu’aux évolutions légales des différents pays, et ce encore plus à l’ère du digital.