How to Enforce Trademark Rights Internationally

Protecting a distinctive brand is essential for companies that trade across borders. In today’s global marketplace, counterfeit goods and trademark piracy cut into legitimate profits and mislead consumers; the World Intellectual Property Organization (WIPO) and Organisation for Economic Co‑operation and Development (OECD) estimate that counterfeit goods account for about 2.5% of global trade and that customs authorities around the world seize more than 130,000 consignments of counterfeit or pirated goods each year. For small and medium‑sized enterprises (SMEs), infringement can be devastating – the EU Intellectual Property Office (EUIPO) reports that SMEs that suffer IP infringement are roughly 34% less likely to survive. Because trademark rights are territorial, obtaining and enforcing protection abroad requires proactive registration, monitoring, and enforcement. This guide explains how to enforce trademark rights internationally using official sources and treaties.

Why enforce your trademark internationally?

Trademarks protect brand names, logos, and slogans by preventing others from using confusingly similar marks in markets where the mark is registered. WIPO explains that enforcement ensures that innovators, entrepreneurs, and creators can fully benefit from their investments. Effective enforcement benefits more than just the owner: consumers rely on trademarks to identify the source of goods and services, and governments depend on strong IP systems to attract investment and protect tax revenues. Without enforcement, counterfeiters flood the market with inferior products, undermining trust, safety, and innovation. For example, WIPO notes that about 10 % of medicines sold globally and 50 % of medicines sold online are counterfeit. Enforcing your rights internationally deters infringers, maintains product quality and reputation, and signals to partners and consumers that you are serious about protecting your brand.

International legal framework

Territoriality and national treatment

A fundamental principle of trademark law is territoriality: a mark is protected only in the jurisdictions where it is registered or otherwise recognized. To obtain protection abroad, a rights holder must file separate applications in each country or use regional systems; local laws govern registration and enforcement in each jurisdiction. Many countries are parties to the Paris Convention for the Protection of Industrial Property, which requires member states to grant nationals of other member countries the same protection they grant their own nationals (the national treatment principle). Although we do not quote a specific article here, this principle underpins most modern trademark laws and ensures that foreign rights holders have standing to sue infringers in participating countries.

TRIPS Agreement

The Agreement on Trade‑Related Aspects of Intellectual Property Rights (TRIPS), administered by the World Trade Organization (WTO), sets minimum standards for IP protection and enforcement. Part III of TRIPS requires WTO members to provide civil, administrative, and criminal remedies that are fair, equitable, and not unnecessarily expensive. Governments must ensure that right holders have access to courts and can ask for injunctions, damages, and destruction of infringing goods. Wilful trademark counterfeiting on a commercial scale must be subject to criminal penalties, and customs authorities must assist right holders to stop imports of counterfeit goods. Although TRIPS does not harmonize national laws, it ensures that each member state provides a basic framework for enforcement.

WIPO’s Madrid System and other international instruments

Registering trademarks internationally is the first step toward enforcement. WIPO’s Madrid System allows a trademark owner to file one application and pay one set of fees to seek protection in up to 131 countries. Applicants must already have or have applied for a national or regional registration in a Madrid member country. Fees include a basic fee (653 Swiss francs, or 903 Swiss francs for a mark in colour) plus additional fees depending on the countries and classes of goods. The Madrid System is not itself an enforcement mechanism, but securing rights in multiple jurisdictions through it makes enforcement possible.

Preparing for enforcement

Register your trademark in target markets

Because trademark rights are territorial, you cannot enforce a mark in a country where it is not protected. To enforce rights internationally:

1. Identify key markets. Consider where you manufacture, sell, or expect to expand, and where counterfeiting is prevalent. The USPTO urges companies to file patents or trademarks in each country where protection is sought.
2. Use the Madrid System or local filings. When dealing with multiple jurisdictions, the Madrid System simplifies filings by allowing a single application. For countries not in the Madrid System, file directly with the national IP office.
3. Record trademarks with customs authorities. In the United States, recording your registration with S. Customs and Border Protection (CBP) helps border officials seize counterfeit imports. Many other countries provide similar recordation systems or operate through WIPO’s IP Enforcement Portal (EU) to enable customs to detain suspect shipments.

Mechanisms for enforcing trademark rights internationally

Cease‑and‑desist letters and negotiation

Often, the first step in enforcement is to notify the infringer. WIPO’s guide for SMEs suggests sending a letter asking the infringer to stop using your mark. Such letters should cite your registration and request that the infringer cease unauthorized use, surrender infringing goods, and confirm compliance within a specified time. Follow up on the letter; failing to act may weaken your ability to enforce your rights. In many cases, an infringer will stop voluntarily, particularly if the letter is from a lawyer.

Alternative dispute resolution (ADR)

When negotiation fails, consider mediation or arbitration. WIPO offers arbitration and mediation services to resolve IP disputes efficiently. ADR proceedings are confidential, faster, and less formal than court litigation. They are especially useful when parties are in different countries because decisions can be tailored to the needs of the parties and may be easier to enforce through a contract.

Domain name disputes

Cybersquatting – registering a domain name identical or confusingly similar to your trademark – is a common problem. WIPO’s UDRP provides an efficient solution: a trademark owner can file a complaint seeking transfer or cancellation of the infringing domain. The complainant must show that the domain is identical or confusingly similar, that the registrant lacks legitimate interests, and that it was registered and used in bad faith. The UDRP is international, and decisions are implemented by domain name registrars.

Administrative and civil litigation

If infringement continues, legal proceedings in the infringer’s country may be necessary. TRIPS requires WTO members to provide provisional measures, allowing courts or administrative authorities to order a halt to the infringement and preserve evidence. Civil remedies include injunctions, monetary damages, destruction of infringing goods, and removal of counterfeit labels. Administrative actions (such as opposition or cancellation proceedings before a trademark office) can also be effective.

Litigation abroad generally requires hiring local counsel. Because each country has its own rules for procedure, evidence, and available remedies, working with experts familiar with the jurisdiction is essential. Many countries allow foreign rights holders to sue even if they have no local presence, but some require representation by a locally licensed attorney.

Border measures and customs seizures

One of the most effective enforcement tools is preventing counterfeit goods from entering the market. TRIPS obligates WTO members to allow customs authorities to suspend the release of goods suspected of infringing trademarks. In practice, rights holders must record their trademarks with customs agencies and provide information (e.g., product photos, authorized importers). The USPTO encourages U.S. rights holders to record their trademarks with CBP. In the European Union, the IP Enforcement Portal allows rights holders to submit Applications for Action to customs authorities across member states; once recorded, customs officers may detain suspected counterfeit goods and notify the rights holder for further action.

Summarizing enforcement mechanisms

Enforcement mechanism	Key features	Official guidance
Cease‑and‑desist letter	A formal demand that an infringer stop using the mark and take corrective action. Often resolves disputes without litigation.	WIPO suggests sending a letter and following up to preserve enforcement rights.
Alternative dispute resolution	Mediation or arbitration through WIPO or private institutions; confidential, flexible, and quicker than court litigation.	WIPO recommends ADR to settle disputes before resorting to courts.
UDRP (domain names)	International mechanism to reclaim infringing domain names; requires proof of confusing similarity, lack of legitimate interest, and bad faith.	WIPO explains that any trademark owner can file a UDRP complaint and that decisions are implemented by registrars.
Civil/administrative procedures	Court or trademark-office actions seeking injunctions, damages, and destruction of infringing goods.	TRIPS mandates fair and efficient enforcement procedures and remedies.
Border measures	Recording of trademarks with customs to detain counterfeit goods at borders.	TRIPS requires customs assistance; USPTO encourages recording U.S. trademarks with CBP.