Trademarks registered in a foreign country

The boom of e-commerce and online trade has drastically increased the request for online trademark registration procedures. The registration and recognition procedure of a brand overseas are necessary for anyone who intends to expand their market out of Italy and the EU, and needs to have a foreign trademark registered in a specific extra-EU country. 

How to register name and logo abroad. Principle of territoriality of trademarks.

As a non-Italian citizen, it is possible to register a trademark abroad with the counsel of an Italian trademark attorney.

A crucial aspect of trademarks refers to the national territory where the mark is registered and valid – mark through which a product is recognised and a service commercialised. Accordingly, a foreign trademark must be registered nationally in each individual foreign country where the company seeks to extend their market and needs to receive protection. 

Extension of a company trademark overseas

A foreign trademark is a mark which is not registered in Italy. If the trademark is registered in Italy and the company intends to have it recognised overseas, three different procedures can be followed:

• Registration of a Europen EUIPO trademark; 
• Registration of an international WIPO trademark; 
• Registration of a trademark overseas in one or more extra-EU countries.

There are considerable risks connected to trademark identification mistakes. Such errors can lead to harming the image of the business or even to loss of profit from a service or product. Hence why it is best to be assisted by a trademark consultant while following such procedures.