Unfortunately, it is not possible to register your own trade mark for the territory of the whole world with one application. Therefore, to find the right answer to this question you should set up the short-, middle-, and long-term plans for the development of your business and to focus on the registration of a national or regional trade mark accordingly, which later, when your business gets larger, you will turn into an international registration – for the territory of additional countries.
1. National trade marks
If your plans for business development are more modest and within the next 5-6 years you are planning to concentrate on the market of respective goods and/or services on the territory of one country only, then you should register your own national trade mark in the country in question.
National trade mark is a trade mark registered with the respective institution in a given country, which, following its registration, will ensure the trade mark holder protection of the goods and/or services designated with the trade mark in the territory of the certain country. For example, a Bulgarian trade mark, registered with the Patent Office of the Republic of Bulgaria , which provides the trade mark holder with legal protection only in the territory of the Republic of Bulgaria.
If you are a Bulgarian producer and plan, within the next 5-6 years, only to focus on the Bulgarian market, then as a start you should register your own Bulgarian national trade mark.
However, if you plan, within the next 5-6 years, at the same time to develop the markets in several European countries, EU Member States, then as a start you should register your own European trade mark, constituting a regional trade mark.
2. Regional trade marks
Regional trade merks are trade marks registered with the respective institution of political and/or economic unions of groups of countries, which, following their registration, provide equal legal protection in the territory of the member states of that union. An illustration of this kind of trade marks are the EU trade marks (under the former name of Community trade merks), registered by the EU Office of Intellectual Property . Once registered, an EU trade mark provides its holder with equal legal protection in the territory of all future and current EU Member States at the price of one fee for registration.
The disadvantage, if called such, with the registration of a EU trade mark, is the fact that if a holder of an earlier similar national trade mark effective for the territory of any of the EU Member States successfully protested against it, the EU trade mark so filed for registration will not be registered and there will be ordered rejection for its registration.
That is why, if a research made for the name of your future EU trade mark finds out earlier similar national trade marks in some of the EU Member States and if you don’t have firm intentions to carry out business under the trade mark all over EU, it is more reasonable to register a national trade mark – i.e. a Bulgarian national trade mark which is to be registered internationally – for the territory of the foreign countries, where you intend to operate under your trade mark.
3. International Registration
International registration of national and regional trade marks, including EU trade marks, is performed by the World Intellectual Property Organization (WIPO) under the provisions of the Madrid System . Thanks to its international registration, the relevant national or regional trade marks, including EU trade marks, may expand its territorial scope of protection for the territory of the respective member states, who have signed the Madrid Protocol , as stated in the application for its international registration. Once obtaining an international registration, the respective national or regional trade mark may gradually, in line with your business growth, expand the scope of its territorial protection, adding more member states, who have signed the Madrid Protocol through relevant applications for territorial expansion of its international registration.
Each individual application for territorial expansion of a trade mark international registration is charged a fee according to the number of countries stated in the application and registration fees set out by these countries. Unfortunately, not all countries in the world are member states of the Madrid Protocol . If a foreign country, whose market you are interested in, has not signed the Madrid Protocol, the only solution for you will be to register your own national trade mark in this country.
If I have not been able to answer all your questions about in which countries to register your own trade mark or if you hesitate and need help, I would be happy to assist you and can be contacted here.