Choosing a Country for Trade Mark Registration When Entering International Markets

Entering an international market is not only about new customers and sales, but also about building a new strategy for protecting your brand. Today, goods and services may be developed in one country, while the target audience may be thousands of kilometres away. For example, a product may be created in Ukraine, manufactured in China and sold in Italy. This model is particularly relevant for online businesses, where the team may be based in the EU while users are located all over the world.

Under such circumstances, your trade mark effectively becomes recognisable across different markets. That is why it is important to choose the right jurisdiction for brand registration in advance.

Where should you start?

It is important to keep in mind that a trade mark is protected only where it is registered. Therefore, if you plan to distribute your goods or services in more than one country, it is also advisable to register your brand in the jurisdictions where you plan to sell them.

Each country has its own trade mark office, fees and filing rules. The aim is to minimise the risk that someone else registers a similar or identical trade mark for similar goods and services before you do.

At this stage, the question is which route to choose:

• national registrations in individual countries;
• registration of a trade mark through a single application covering the whole EU (EUTM);
• international registration under the Madrid Protocol in participating countries.

	When it is suitable	What to consider
National registration	Protection is needed in one or several individual countries, for example, Ukraine and the US.	Greater flexibility: you can have different lists of goods and services in the relevant classes and respond separately to risks in each individual country.
EUTM	The business operates or plans to operate in several EU Member States at the same time.	One application covers all 27 EU countries at once, but a conflict in one EU country may affect the entire application.
International registration under the Madrid Protocol	You need to cover many countries in different regions, for example, Asia, Latin American countries, Japan, etc.	The system covers at least 132 countries selected by you, but each national office examines the trade mark separately for conflicts and compliance with local requirements.

Usually, the first application is filed where the company already carries out its activities, and then protection is extended to the main sales and expansion markets. For example, if you plan to enter the market in:

• the US: it is advisable to first register the trade mark in the United States through the USPTO, after which trade mark owners most often expand further to Canada, the United Kingdom, the EU, Australia and Mexico;
• the EU: you should start with a single EUTM application covering all 27 countries. At the same time, it is possible to cover only the three Benelux countries through a single application or file a national application in an individual EU country;
• Asia: registrations are most often sought in China, India and South-East Asian countries, especially if production is located there;
• Latin America: it is possible to cover several countries in the Andean region at once: Bolivia, Colombia, Ecuador and Peru. However, Mexico and Brazil remain the main destinations.

What factors affect the choice of jurisdiction?

1. In which countries is the brand already being used?

Start by identifying the regions where there are already sales of goods and services, customers and partners. If you still do not have registrations in these regions, these are the countries that should be considered first.

2. Which markets are you planning to enter in the near future?

Think about how quickly your company may enter new markets. This will help you create a priority list of countries for registration. There is no need to register a trade mark in every country that may potentially become relevant to you. Instead, it is worth taking into account in advance the regions you plan to enter within the next 1–3 years.

At the same time, there may not yet be any sales in the country. For example, the product may already be developed specifically for that market, a main launch may be planned there, or investment may be sought there. In such a case, that country may become a priority for trade mark registration even before actual sales begin.

3. Budget and cost planning

The overall cost of trade mark registration is affected by:

• the number of jurisdictions (more countries = higher costs);
• the number of classes of goods and services (in almost all jurisdictions, additional classes are subject to a separate fee for each class);
• official fees charged by the office for filing a trade mark application;
• legal costs (preliminary analysis of the chances of registration, preparation of the application, involvement of a local representative where necessary, communication with the office in the event of an opposition or refusal).

4. Specific requirements for the use of a trade mark

The rules on the use of a trade mark after registration differ from country to country. Before filing, it is worth checking not only whether the trade mark can be registered, but also how to preserve the rights to it.

For example, in the EU, during the first 5 years after registration, the trade mark owner is not required to prove its use. However, after this period expires, other parties may attempt to cancel the registration precisely because of non-use of the trade mark. Therefore, it makes sense to file an application if you know for certain that within those 5 years the product or service will already be offered in the EU.

At the same time, in the US, in order to maintain the registration, the owner must, among other things, submit evidence of actual use of the trade mark between the fifth and sixth year. Otherwise, the registration may be cancelled.

Therefore, it is important at the initial stage of choosing countries to understand whether you will actually be able to use the trade mark in that market and comply with the requirements for maintaining the registration in that country.

5. “First application” vs “first use”

In most jurisdictions, the “first applicant” rule applies, meaning that the right to a trade mark is granted to the person who first filed the application, rather than to the person who first used it. At the same time, in the EU and the US, the first use of an unregistered trade mark may also be taken into account.

Therefore, before entering a new international market, it is advisable to check local rules and publicly available sources: sometimes delaying the filing may create a risk that other parties are already using an identical or similar trade mark in that country.

6. Right of priority

If you have already filed a trade mark application in a particular country, you have 6 months to file further applications in other countries and claim priority from the date of the first filing.

For example, if the first application is filed in the US on 1 September 2026, then by 1 March 2027 you can file a trade mark application in the EU, the United Kingdom or another country participating in the Paris Convention and retain 1 September as the priority date for your application. If the six-month period is missed, you can still file in other countries, but without retaining priority.

This is convenient if the business enters international markets gradually. It is not necessary to file all applications at the same time: the first application effectively gives you another 6 months to see how it progresses, how the business develops, and to determine the next countries, budget and plans.

There is one important point: the wording of goods and services in the selected classes cannot be broader than the list included in the first application. Therefore, already at the stage of the first filing, it is worth considering what exactly you plan to protect in other markets.

Why is an international application not suitable for everyone?

The Madrid System is administered by the World Intellectual Property Organization (WIPO) and allows you to extend trade mark protection to several countries through a single application filed with the relevant national office in the country of origin. For example, the first step may be filing an application in Ukraine, followed by filing through the Madrid System for registration in other countries.

Clearly, the main advantage of an international application is that it simplifies the registration process for obtaining protection in several jurisdictions.

At the same time, one of the disadvantages is that a refusal or objection in any country may affect the application as a whole. This also applies to the first application in the country of origin. For example, if the basic application is filed in Ukraine, all subsequent applications under the Madrid Protocol will effectively be tied to the Ukrainian one, which creates additional risks and leaves less room for flexibility. Taking into account the fact that the trade mark registration process in Ukraine takes around 2 years on average, during this period you will not know for certain whether everything is fine with your Ukrainian application. Accordingly, problems with the Ukrainian registration create risks for the application filed under the Madrid System that depends on it.

In addition, the list of approved wording in the relevant classes of goods and services in Ukraine is very limited, while all subsequent applications cannot be broader than the basic application in Ukraine. This means that your basic application will effectively determine the limits for further applications in other countries.

Checklist for successful brand protection

☐ Correctly determine the classes of goods and services for your trade mark.

You can review the list and select the relevant classes using the Nice Classification of Goods and Services. Once the application has been filed, it will no longer be possible to expand the number of classes, so a new application in other classes will need to be filed for that trade mark.

☐ Approve the final version of the trade mark before filing the application.

If you include a figurative or combined trade mark in the application, make sure that its use does not differ from the version filed. Having evidence of use of the trade mark in the form in which it was filed is an important factor, particularly in cases where evidence of trade mark use must be submitted in the US or where third parties intend to cancel your registration.

☐ Choose priority jurisdictions for registration.

Most often, companies protect their brand in 2 stages:

• STAGE 1: National registration in the country of origin or principal place of business. If your business starts operating in Ukraine, it may be appropriate to file the application first in Ukraine. If the main market is different from the outset, for example China, it is worth focusing on that market instead.
• STAGE 2: New jurisdictions for expansion. Most often these are the EU and the US. If the product or services are aimed at an English-speaking audience, the United Kingdom, Canada and Australia may also be included in this list.

The list of countries can then be expanded depending on the business plans and entry into new markets.

☐ Conduct a comprehensive search.

An analysis of potential conflicts with owners of other trade marks helps assess the risk of refusal in advance and, where necessary, adjust the trade mark itself or the wording of goods and services in the selected classes. The search should be carried out not only in official registers, but also in publicly available sources. In some jurisdictions, the first use of an unregistered trade mark may create rights to it and result in a challenge to your application or registration.

The lawyers at Legal IT Group can help you take these nuances into account.

☐ Keep track of renewal deadlines.

The term of a trade mark registration certificate in many countries is 10 years, while in the US it is 5–6 years. To renew the registration, it is necessary to submit the relevant application to the office within the prescribed period, taking into account the requirements of each jurisdiction. Missing this deadline may result in the loss of the registration.

Conclusion

When entering an international market, it is important to determine which country the business needs the trade mark in. Priority should be given to countries where there are already sales, a target audience, production or plans for expansion within the next 2–3 years. Registering a trade mark immediately in all possible countries is not always the best solution. It is more important to set the right priorities when choosing jurisdictions.

This approach helps avoid unnecessary costs, reduce the risk of conflicts with other trade mark owners, and protect the brand in markets that are genuinely important for the business.

The Legal IT Group team assists professionals from various industries with trade mark registration and protection in Ukraine, the EU, the US and other jurisdictions. If you have questions regarding the choice of the jurisdiction that is right for you, as well as the assessment of the chances of registration, the cost of official fees and procedural aspects of trade mark registration, contact us, and we will explain the details.