International Trademark Protection
Overview
Growing your brand? We'll help you protect it
Is your business outgrowing a single country, with your brand gaining popularity beyond Poland? Are you just planning to launch your products or services in new markets? Or are you struggling with brand theft and so-called bad-faith trademark registrations by foreign entities designed to block your business in a given market?
Trademark registration – including the USA and China
Our firm has extensive experience in registering trademarks and enforcing rights beyond Poland as well. Working with foreign intellectual property law firms, we provide our clients with comprehensive legal support in every country in the world. What sets us apart is our deep experience in registering and protecting trademarks in CHINA and the USA.
We’ll help you protect your brand effectively worldwide
Tell us in which country or countries you want to protect your name or logo – we will propose a strategy and provide a quote.
Remember that trademark protection is limited territorially and is obtained by registration with the relevant office, and that the guiding rule in trademark registration is “first come, first served”.
Using a mark, or registering it in one country, therefore does not automatically protect it worldwide. We will check whether the sign you use is available in a given territory and handle the registration process at the office of your choice.
Our services
Depending on your needs, we can
- file an application directly with the national office of your choice;
- register your trademark under the Madrid System at the World Intellectual Property Organization (WIPO) – the INTERNATIONAL REGISTRATION. This is a good option if you already have a trademark registered in Poland or in the European Union.
- WIPO lets you file a trademark application simultaneously in many states party to the Madrid Agreement and Protocol. What do you gain by choosing WIPO?
- Time – a single filing is enough, designating the states where you do or plan to do business;
- Money – fees are paid to one office (WIPO) rather than to national offices, and in one currency (CHF) rather than in national currencies;
- No local representative required at the filing stage – which also lowers the cost of the proceedings;
- Exclusive rights in many countries through a single application.
Bear in mind, though, that WIPO does not itself grant trademark protection – its role is that of the administrator of your right, no more and no less. Based on your national trademark application or registration, we can extend the protection of your mark to the territories you choose. Each national office, however, carries out its own procedure for granting trademark protection. Our firm, of course, supports you throughout the entire process.
Interested in working with us? Get in touch.
The Chinese market
China
Want to register your trademark in China? Need a reliable partner to guide you through the entire process? Have you noticed a Chinese company starting to use your trademark and felt powerless? Get in touch with our firm! With the right contacts and a sound knowledge of Chinese law and the Chinese market, we will help you take your first steps in China and look after your business!
Bad-faith trademark registration
Today, businesses increasingly struggle with brand theft and so-called bad-faith trademark registrations by foreign entities. The practice is remarkably widespread in China, where companies more and more often manufacture their goods before shipping them to the European market. If someone else has registered your mark in China, they may even have your goods – bearing your own mark – stopped at the border, or demand substantial sums to sell the mark back to you.
Chinese law does provide measures against bad-faith registrations, but they are time-consuming and involve extra costs. That is why preventing unfair practices – by registering your mark in China – is so important.
A carefully considered brand for the Chinese market
What’s more, given the cultural and language differences, the choice of a brand for the Chinese market should be particularly well thought out and adapted to those differences. We also recommend registering Chinese translations (transliterations) of your marks.
Let our firm help
Our firm specializes in handling trademark registration in China and can help you vet your choice of brand for that market. We also have proven methods for dealing with so-called blocking registrations and assist in invalidating marks registered in bad faith. Working with a leading Chinese law firm, we will prepare an action strategy tailored to your needs.
The US market
USA
Want to bring your brand to the American market? Looking for a partner to help you review how your mark is used in the USA? Contact our firm! For many years we have been filing applications with the USPTO for our clients and handling their cases end to end.
The US trademark registration system
When entering the American market, the first thing to know is that the US trademark registration system differs significantly from the one operating in the EU.
The first and fundamental difference is the basis for granting protection – the American system follows the first-to-use rule, meaning priority in obtaining protection belongs to whoever first used the mark in the USA. Moreover, use of the mark in the USA is verified as early as the application stage. The US office – the United States Patent and Trademark Office (USPTO) – requires not only a declaration that the mark is in use (the Statement of Use) but also specimens of that use.
The USPTO also has its own classification system for goods and services, and its requirements for their lists are far stricter than in EU countries.
Let our firm help
Our firm has extensive experience in proceedings before the USPTO and in registering trademarks there. We help clients review or gather the materials needed to file the declaration of use and see the registration process through. Working with local US attorneys, we will provide comprehensive protection for your brand in the American market.
First step
How to get started
We will assess the chances of successfully registering your trademark internationally.
We will point out the risks arising from the national legal systems of the countries you select, especially where national offices examine applications on their merits.
If you decide to work with us, we will sign an agreement and prepare your application.
We will file the application and handle the proceedings all the way to registration in all the countries you have selected.
Contact
Let's talk about protecting your brand
Tell us where you want to protect your name or logo. We'll prepare an action plan and a quote.
FAQ
Frequently asked questions
No. Trademark protection is territorial – a registration with the Polish Patent Office (UPRP) protects your mark only in Poland. If you plan to sell or expand abroad, you need separate protection for each market: directly at a national office, across the entire EU (an EU trademark), or through the Madrid System, which covers many countries with a single application. It is best to take care of this before you enter a given market.
The Madrid System is an international mechanism administered by WIPO that lets you protect a trademark in many countries on the basis of a single application, in one language and for one fee. It has 116 members (including the entire EU), which opens the door to protection in approx. 132 countries – from Europe and the USA to China and Japan. It is cheaper and simpler than filing separately in each country, because it cuts the costs of local representatives and translations. You then manage the entire portfolio centrally: one renewal, one change of details.
An EU trademark (EUTM) is a single right covering all 27 EU member states, registered with the EUIPO in Alicante. It is a very cost-effective option if you operate, or plan to operate, in several EU markets – one application instead of a dozen or more. There is a catch, though: if someone successfully challenges your mark in even one country, you can lose protection across the entire EU. If only one or two markets matter to you, a national registration is sometimes cheaper and safer.
Before entering a new market, it is worth running a clearance search – checking whether an identical or similar mark is already registered for similar goods. Free databases help: TMview (millions of marks from around the world), WIPO's Global Brand Database and national registers. Such a search reveals the risk of a conflict and a costly dispute before you invest in packaging, marketing or domains. A professional analysis also covers similar marks and translations of the name – these are what block registrations most often.
It is a common problem, because many countries (including China) operate on a "first come, first served" basis – what counts is the filing date, not actual use. You can try to invalidate such a mark, especially if you can show the applicant's bad faith, but the proceedings tend to be long and costly, and the evidence hard to gather. Sometimes buying the mark back or negotiating turns out to be faster. The best protection is prevention: file your mark in the target country before you start selling or manufacturing there.
You have 6 months from the date of your first filing (e.g. in Poland) to file the same trademark abroad while retaining the so-called priority right. Thanks to it, your later foreign application is treated as if it had been filed on the day of the first one – you leapfrog anyone who filed a similar mark in the meantime. The deadline stems from the Paris Convention and cannot be restored. Once it has passed, you can still file abroad, but you lose that privileged date.
Yes. The United Kingdom is no longer covered by the EU trademark (EUTM), so new marks must be filed in the UK separately, with the UK Intellectual Property Office (UKIPO). If you had an EUTM registered before January 1, 2021, the UK office automatically created a comparable UK trademark free of charge – there you need to do nothing beyond keeping up the renewals. Bear in mind, though: use of the mark in the EU alone no longer sustains protection in the UK, and vice versa.
A trademark is never registered "in general" but for specific goods and services grouped into 45 classes under the Nice Classification (classes 1–34 cover goods, 35–45 services). Protection covers only the classes you list, so they need to match your actual and planned business. The number of classes also directly affects the filing cost in each country. Too narrow a list leaves gaps; too broad a list exposes the mark to non-use challenges – it pays to strike a balance.
In most countries, including the entire EU and the Madrid System, a trademark is protected for 10 years from filing, and protection can be renewed indefinitely for further 10-year periods. You do need to watch the deadlines – once a fee is missed, the mark lapses and a competitor can take it over. One advantage of the Madrid System is a single, joint renewal for all countries covered by the registration. It is wise to keep a calendar of deadlines – or entrust that supervision to a law firm.
Yes. Most systems, including the EU, require a mark to be genuinely used in trade – if it sees no real use in a given market for 5 years from registration, anyone can apply to have it revoked. What counts is actual sales, not token or sham use. That is why it is not worth registering a mark "just in case" in countries where you do not plan to operate within a reasonable time. And keep evidence of use: invoices, packaging, advertising materials.