Clients regularly ask about international registrations, and the truth is there are really several key points to consider. One important consideration, though, is simply the scope of protection that they will need. Depending on their goals and business strategy, they may need to register their trademark in multiple jurisdictions or even be selective about the goods and services being protected. International trademarks can get expensive quickly, especially if a client is looking at a broad list of countries and multiple classes of goods and services. So, it’s critical to know exactly what countries the client plans to use their trademark in and whether every class of good or service is going to be used internationally. For example, while a client might be able to file an application for the EU for all their goods and services, if they're only planning to sell a single type of good in France and Spain, that EU application is going to be significantly more expensive than simply filing for the specific countries. It’s important to ensure that the client’s trademark is protected where and how they’re using it. However, a part of that protection is making sure that they are protecting the right things in the right places, and that’s where the consideration of scope comes in.
When advising a client on international trademark registration, one critical consideration is specifying the client's intentions for their company. Specifically, I would ask them, "Do you intend to do business in the country where you are considering registering your trademark?" This question is paramount. If a client does not plan to engage in business activities within that particular country, it does not make sense for them to pursue an international trademark registration. The critical point is intent, not whether they already offer their business' product or services in that country. This approach aligns with how registered trademarks work and their limitations from the perspective of legal enforceability.