Apply trademark in other countries

A trademark only has protection in the countries in which it is registered. If you are going to use your trademark in several countries, it is therefore wise to think through which countries you need to protect your trademark in.

Read more about Check if the trademark is available

Check if the trademark is available

Before proceeding with the international registration of your trademark, it is a good idea to check whether there are other trademarks that are similar, as this may prevent your use. Read more about how to search in international databases.

Sell, deliver or manufacture abroad?

It is important to think through where you will sell your products. In addition, you may also need protection where they are to be produced.

It is both possible to apply for protection in each individual country that applies to you, and to use an international application scheme. Which is best depends on which and how many countries are important to you.

When should you apply?

If you have just applied for a trademark in Norway, you should apply in other countries before six months have passed. You can then take the application date from the Norwegian application with you as an advantage when you apply abroad. This is called priority.

You must also submit a priority document. You can order this document from the Norwegian Industrial Property Office.

How can you apply internationally?

  • If you are going to use your trademark in many EU countries, it may be appropriate to apply for an EU trademark. Then a single application will be able to give you protection in all member states.
  • If you are going to use your brand in several countries also outside the EU, the international application scheme through the Madrid system may suit you. Then you choose the countries in which you want protection.
  • If you only intend to invest in a few individual countries, it may be most practical to apply directly in these countries.

You can obtain protection in all member states by submitting only one application for an EU trade mark. This is suitable if you need protection in many of the EU countries, and is much simpler and cheaper than applying to each individual country.

The price is from 850 euros, but becomes more expensive depending on how extensive the application is. The application is processed by the EU trade mark authority, EUIPO.

Norwegian applicants can use this scheme, but since Norway is not a member of the EU, an EU registration does not provide protection in Norway.

Benefits:

  • simple, in that you only need to submit one application form
  • cheap
  • if less than six months have passed since you submitted an application in Norway, you can "take this application date with you" as an advantage when applying for an EU trade mark. This is called priority.

Cons:

  • An EU trademark must be registrable in all EU countries. If there are obstacles to registering your trademark in one or more of the countries, it cannot be registered in the EU as a whole. In that case, you can convert the EU application into national applications in the countries where the mark can be registered, and pay to each individual country.

What does it cost to apply for an EU trade mark?

  • Information on fees can be found on EUIPO's website. There is also a fee calculator here.

Is the trademark already registered in the EU?

If you find similar trademarks that are registered in EU countries, it may still be possible for you to register if the registered trademarks apply to goods or services other than what you offer. You can check this in EUIPO's database.

More information

The international application scheme is based on a normal trademark application (or registration) from a single country, such as Norway. We call this the basic application. This basic application is the basis for an international registration and the further process. You then select the specific countries in which you want protection.

The system is called the Madrid system because it is based on an international agreement that was signed in Madrid. Norway is a member of the scheme through the agreement called the Madrid Protocol. The UN agency World Intellectual Property Organization (WIPO) is responsible for administering the application scheme.

Benefits

  • easier and cheaper than applying in each individual country separately
  • possibility to extend the international registration at a later date to cover more countries than those you have originally chosen
  • the processing time in the various countries may vary, but is never more than 18 months (countries have a maximum of 18 months to decide whether the trademark can be registered in their country)
  • if less than six months have passed since you submitted the basic application, you will receive this application date as a benefit. This is called priority.
  • only one authority (WIPO) to deal with for the administration of the registration in many countries (payment of fees, renewals, transfers, etc.)

Cons

  • The international application is dependent on the national basic application for five years. If the basic application is refused or deleted before five years have passed, the international registration in WIPO is lost. If that happens, you can convert the international registration into national cases in the individual countries.

More information

If you only intend to invest in a few individual countries, it may be most practical to apply directly in these countries.

If less than six months have passed since you submitted an application in Norway, you can "take this application date with you" when you apply in another country. This is called priority.

How you proceed and what it costs varies from country to country.

See an overview of authorities in other countries further down the page.

Not sure which is best?

Which countries you will apply in can be important strategic choices. It may therefore be a good idea to contact a professional adviser before making large investments.

– In the initial phase, the rights were important to give us room to develop the company, without an actor taking the market away from us by copying our innovations. Now that the company is bigger, the rights are important to crack down on blue copies and copies of our innovations both nationally and internationally.

Truls Brataas

Founder Db Equipment

Truls_400x400

Truls Brataas

Founder Db Equipment

Do you need help registering internationally?

Our customer center will be happy to help you.

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