Unfortunately, it is not possible to register your own brand 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 brand accordingly, which later, when your business gets larger, you will turn into an international registration – for the territory of additional countries.
- National Brands
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 brand in the country in question.
National brand is a brand registered with the respective institution if a given country, which, following its registration, will ensure the brand holder protection of the goods and/or services designated with the brand in the territory of the certain country. For example, a Bulgarian brand, registered with the Patent Office of the Republic of Bulgaria, which provides the brand 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 brand.
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 brand, constituting a regional brand.
- Regional Brands
Regional brands are brands 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 brands are the EU brands (under the former name of Community brands), registered by the EU Office of Intellectual Property. Once registered, EU brand provides its holder with equal legal protection in the territory of all current and future EU Member States at the price of one fee for registration.
The disadvantage, if called such, with the registration of a EU brand, is the fact that if a holder of an earlier similar national brand effective for the territory of any of the EU Member States successfully protested against it, the EU brand 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 brand finds out earlier similar national brands in some of the EU Member States and if you don’t have firm intentions to carry out business under the brand all over EU, it is more reasonable to register a national brand – i.e. a Bulgarian national brand which is to be registered internationally – for the territory of the foreign countries, where you intend to operate under your brand.
- International Registration
International registration of national and regional brands, including EU brands, is performed by the World Intellectual Property Organization (WIPO) under the provisions of the Madrid Protocol. Thanks to its international registration, the relevant national or regional brand, including EU brand, 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 brand 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 brand 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 brand in this country.
Andon Nastev, Attorney-at-law
Petya Noycheva & Partners Law Firm