Just got back from a family vacation in Puerto Rico. While there, I saw a rental car company called Target with the same logo as the Target stores so common on the U.S. mainland. Well of course that got me to thinking. Is this rental car company infringing on Target (the store’s) trade-name and trademark (the logo)? Or is it the case that even though Puerto Rico is a U.S. territory, its trademark regime is separate from the United States?
My research quickly determined that Puerto Rico’s trademark regime is actually separate from that of the United States. In other words, if you want your name or mark trademarked in both the United States and Puerto Rico, you should register it in both places. Presumably, Target rental car beat Target stores to the name and logo in Puerto Rico and is now able to use both legally there.
Hong Kong and China are the same way. And Taiwan and Macau too. Our international IP lawyers constantly have to explain this to our clients, at least half of whom just assume that a trademark registration in the PRC operates as a trademark registration in Hong Kong and vice-versa. And who can blame them, since Hong Kong is one with the mainland, right? Same with Macau, right? Many have this same view regarding China and Taiwan as well. None of this is true.
If you want your brand or mark registered and thus protected in China, Hong Kong, Macau and Taiwan, you must register them in China, Hong Kong, Macau and Taiwan. If you thought you were protected in more than one of these places simply because you had registered in one, you better get moving and start registering in one, two, or three more.
What do you think?