International trademark protection

If you are going to market products and/or services in markets outside Sweden, it is important that you apply for international trademark protection. Not only to secure the intellectual property rights to what you sell, but also to not risk unknowingly infringing an already registered foreign trademark.

What does international trademark protection involve?

International trademark protection, just like trademark protection in Sweden, is about ensuring the exclusive rights of use for things that specifically characterize your particular products or services. For example, it can be a specific logo, a font, a product design, or a signature sound.

Since a Swedish trademark registration only applies within Sweden, it is important that you apply for international trademark protection if you intend to sell your goods or services on foreign markets. It is also important to obtain trademark protection in the country where you may manufacture.

The application can be made in three different ways depending on whether you wish to protect your trademark in one country alone, within the EU, or globally.

Different registration requirements for different countries

International trademark protection is obtained by registering your trademark in the foreign market or markets on which you are going to market your goods and/or services. The application process is quite similar in most markets, but some countries have their own specific requirements for who is permitted to register a trademark and the process involved. For example, you may need to have a partner or other local contact in the country, which understandably takes time to establish and makes it a difficult requirement to meet.

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How to protect your brand abroad

Depending on where you wish to obtain trademark protection for your products or services, your application should be sent to different authorities.

Trademark protection in a specific country

If you are only planning to sell your products or services in one or just a few individual markets outside of Sweden, it is sufficient to apply for registration in that specific country or those countries. The application is then sent directly to the relevant intellectual property office in that country – that is, the equivalent of the Swedish Intellectual Property Office (PRV).

A complete list of intellectual property offices in individual countries can be found at the World Intellectual Property Organization (WIPO).

Trademark protection in the EU

If you wish to protect your trademark in several European countries, it is both cheaper and easier to apply to register an EU trademark, rather than filing individual applications for each country. This is the case even if you do not intend to market your business on all markets within the EU.

International trademark protection within the EU gives you the exclusive right to market your services or goods in all member states of the Union. Both existing and future members. The application for registration is sent to the European Union Intellectual Property Office – EUIPO.

It is important to keep in mind that, for example, Switzerland, Norway, or the UK are not covered by trademark protection within the EU because they are not themselves members of the Union. So protection in European countries that aren’t members of the EU must be applied for separately.

Global trademark protection

You will get the most comprehensive international trademark protection if you apply for trademark registration with the World Intellectual Property Organization (WIPO). Over 100 countries are available to choose from, as well as unions such as the EU and BeNeLux. You choose which countries and/or intergovernmental organizations you want to apply for trademark protection in.

It’s important for you to know that international trademark protection via WIPO can only be obtained once you have applied for and been granted national trademark protection in Sweden or trademark protection within the EU. This is because your registration with the Swedish PRV or the European EUIPO is the basis for your application to WIPO.

Helpful information about trademark protection abroad

International trademark protection can be obtained in the countries and intergovernmental organisations that are parties to the Madrid Protocol.
Your international trademark registration is linked to your Swedish registration for five years from the date it takes effect. This means that any changes in your Swedish registration – the so-called basic registration or application – also affect the international registration for your trademark. Examples of changes can be a new list of goods or services, or if trademark protection is terminated.
Trademark protection outside of Sweden can only be obtained if there is not already a similar or identical registered trademark in the markets and within the trademark classes you are applying for.

We can help you protect your trademark internationally

Do you want help applying for trademark protection outside of Sweden? Get in touch with us at Abion. Our trademark experts can be of service with everything from a preliminary investigation to application and further management of your approved trademark registration.

FAQ about international trademark protection

What happens if someone infringes on my registered trade mark?

If someone infringes on your registered trade mark, you have several options to address the situation:

Cease and Desist Letter
Send a formal notice to the infringer, demanding that they stop using your trade mark. Often the first step, this letter serves as a warning and can sometimes resolve the issue without further legal action.
Negotiation and Settlement
Engage in direct negotiations with the infringer to reach a mutually agreeable solution. This can lead to a settlement that might include payment for damages, an agreement to stop using the mark, or a licensing arrangement.
Administrative Action
File a complaint with the trade mark office or relevant authority in the jurisdiction where the infringement is occurring. The office may take administrative actions such as cancelling the infringer’s registration or preventing their use of the mark.
Litigation
File a lawsuit in civil court against the infringer. Seek legal remedies such as an injunction to stop the infringing use, monetary damages, and potentially the recovery of attorney's fees.
Customs Enforcement
Register your trade mark with customs authorities. Customs can help block the import and export of counterfeit goods bearing your trade mark.
Alternative Dispute Resolution (ADR)
Utilise mediation or arbitration to resolve the dispute. These methods can be less costly and quicker than litigation.

Having a professional trade mark attorney on your side for any infringement actions is highly recommended.

Is a trade mark only valid in one country?

No, a trade mark is not only valid in one country. Trade mark protection can be sought at the national level, where it provides protection and exclusivity within the specific country where it is registered. However, it is also possible to extend trade mark protection internationally. Abion, with its global reach and expertise, can assist you in securing trade mark protection in multiple countries.

What can be registered as a trade mark?

Trade marks encompass a wide spectrum of brand elements, such as words, product name, logos, symbols, slogans, and even sounds or colours, all of which play a crucial role in uniquely identifying your brand in the marketplace. These intellectual property elements are the building blocks of your brand's visual and auditory identity, serving to distinguish your products or services from those of competitors. By registering these trade marks, you gain exclusive rights to use and protect these brand identifiers, establishing a strong and recognisable presence in the market.

Do I need to hire a professional to help me register a trade mark?

Registering a trade mark can be a complex and nuanced process, involving legal terms, documentation requirements, and potential pitfalls. While it is possible to proceed without professional assistance, hiring a trade mark attorney can offer various advantages and increase your chances of a successful registration.

A trade mark attorney can conduct a comprehensive search to identify potential conflicts with existing trade mark, ensuring that your application has a higher chance of being accepted. They can also provide strategic advice on trade mark selection, helping you choose distinctive and protectable marks that align with your brand's long-term objectives. The legal aspects of intellectual property can be complex and a small error can weaken your trademark protection, and lead to legal action against you.

Furthermore, a trade mark attorney acts as your advocate throughout the application process. They can respond to any official actions or objections from trade mark examiners, handle communication with trade mark offices, and provide guidance on potential oppositions from other trade mark owners. Their expertise can help navigate any legal complexities and ensure a smoother path to registration.

Ultimately, while hiring a professional is not required by law, it is highly recommended to consult a trade mark attorney to maximise your chances of a successful trade mark registration. They can provide invaluable guidance and support, helping you protect your brand effectively and avoid potential setbacks. At Abion, we have a team of experienced trade mark attorneys who can assist you at every step of the registration process, ensuring your trade marks are handled with precision and care.

How can Abion help with trade mark registration?

Abion offers comprehensive trade mark registration services, guiding you through the process from start to finish to ensure your brand is legally protected on a global scale. Our expert team of trade mark professionals is dedicated to safeguarding your brand with passion and dedication.