Although many trademark systems have some basic common elements, such as some application process, some review process by a government authority and issuance of some document that attests to ownership of the trademark, in many cases the similarities end there. Trademark registration requirements, standards, procedures and practice in foreign countries differ greatly from the United States.

Although filing applications in countries outside of the United States entail similar procedures as in the United States, notable differences exist. For example, it is possible to register a mark in most foreign countries without actually using the mark, although there are some jurisdictions that will only register a mark if it is already registered in some other specified country. In fact, a fundamental difference between the United States and most other countries, is that in most foreign countries, trademark rights arise only from registration of the trademark with the Trademark Office, and not from use of the trademark. As a result, the first party to win the race to the register is the party who owns the trademark rights, even though another party may have first used the mark in the particular country.

As in the United States, it is necessary to file applications in foreign countries in respect of certain goods or services, although most jurisdictions do not require that the specifications of goods be as detailed as in the United States. This is particularly important as technology advances in the field of recording media, since record companies and artists who have limited themselves to narrow specifications of goods, such as “tapes and phonograph records” may not have adequate protection in certain jurisdictions in connection with compact discs, digital recording media and optical recording media, or other media as technology develops. Each jurisdiction has its own requirements as to what type of specification of goods or services will be required and permitted.

Some jurisdictions provide registered protection for goods, but do not provide for the registration of marks in respect of services, such as "live musical performances." In these jurisdictions it is important that some measure of registered protection be obtained and, therefore, service mark owners are advised to obtain protection in respect of goods that are related to the services being offered.

Another difficulty in respect of service marks arises with respect to retail services. In contrast to the United States, in many countries it is not possible to obtain registered protection for retail store services, so that, for example, service mark protection for TOWER RECORDS or VIRGIN MEGASTORE would be unavailable in respect of “retail store services.” Strategies to surmount this obstacle require creative trademark counsel.

Foreign jurisdictions may require additional documents and materials in order to support a trademark application, such as local Powers of Attorney or Authorizations of Agent, which must be specially prepared, certified copies of Certificates of Registration in other countries, Certificates from a local Chamber of Commerce attesting to the business activities of the applicant, specimens, drawings or prints of the mark, Certificates of Adoption or Statements of Ownership. Some countries may even require that documentation be legalized by a foreign consulate or authenticated by the United States Department of State.

In over 160 jurisdictions, it is possible to rely on the Paris Convention [8] to establish filing priority, which is especially helpful in countries where the first party to register a mark is the party to own the mark, regardless of prior use of the mark. According to the Paris Convention, a party that files their first trademark application in a member state of the Convention, such as the United States, may within six months of that filing date file applications in other member countries claiming the priority of the first application. Therefore, a party who files its first application in the United States on January 1, 2001 may, until June 30, 2001, file applications in most foreign jurisdictions and claim as their date of filing January 1, 2001, even though the foreign applications were filed later. Although this procedure entails additional costs, it may be worthwhile in certain countries, particularly where a musical group is planning a tour or releasing recordings abroad.

Once applications are filed in foreign countries, they may take vastly different directions. Many countries provide for extensive examination of trademark applications, much like the United States, although many countries have stricter standards of registrability than in the United States. Therefore, United States trademark owners are often surprised that their mark may be considered registrable in the United States but will not be considered registrable in many countries outside of the United States. Objections to the inherent registrability of marks may be similar to those encountered in the United States, such as the mark is descriptive or misdescriptive of the goods, the mark is non-distinctive or generic, the mark consists merely of a surname (which is not per se registrable in some countries), or a geographic name, the mark is deceptive or laudatory. These considerations, of course, must be taken into account when a trademark is adopted.

The length of time required from the filing of an application to the issuance of a Certificate of Registration in foreign countries also varies widely. Some jurisdictions take only a few weeks or months to issue a Certificate of Registration whereas applications in other jurisdictions may linger for up to 10 years before a registration issues. Such considerations may affect the decision to seek registration in certain countries.

Once the Certificate of Registration is issued, the Certificate may be valid for as few as five years and for as many as twenty years, depending upon the jurisdiction, and will be subject to renewal payments, and in some countries periodic taxes and affidavits of use. It is essential that trademark rights be entered into a computer docketing system, preferably a system designed expressly for trademark record-keeping, managed by a specialist firm that can notify trademark owners when changes in laws or requirements occur and when action to maintain trademark registrations or applications must be taken.