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International Trademark Protection in a Global Marketplace

International trademark registration lawyer

Trademarks are among the most important assets of any company. Naturally, then, most companies want to protect these essential and valuable assets to the greatest extent possible and therefore make sure they are registered as trademarks within their own country.

But too many companies stop there, thinking their job complete. It does not occur to them that trademark rights are territorial and that owning a trademark in their own country creates no rights whatsoever in most countries outside their own country’s borders. This issue often comes to light only after a problem has been encountered, such as someone selling knockoffs of the trademark owner’s products in another country. If the company is fortunate, corrective action is still possible. For many, however, it may be too late and no legal remedy exists. For such a company, someone else now owns “its” trademarks in that other country (or countries) and the only option, if any, is to purchase them back from the foreign “owner”, usually at a high price.

Though being forced to buy “your” own trademark might sound like extortion, in most countries this is perfectly legal. This is because most countries (but not the United States or the UK or Canada or Australia) grant trademark rights to the “first to file,” not to the “first to use,” the brand name or logo or slogan. The first company to file an application to register a trademark, whether or not someone else is already using it, becomes the trademark owner in that country.

For that reason, trademark registration overseas can be even more important than in the United States or the UK or Canada or Australia.

First of all, without a registration in a particular jurisdiction, you usually will not be able to prevent someone else from using your brand name. Moreover, to add insult to injury, if that other party has registered the your brand name as a trademark in some foreign country YOU could even be prevented from using your brand name in that country and YOU could also be liable for trademark infringement if YOU were to do so. And note also that many countries (especially in Asia) define “use” to include having your product manufactured within its borders.

It is therefore not surprising that in many countries (particularly in Latin America and Asia) there are people watching out for successful emerging companies so they can quickly register those companies’ trademarks first in their own country. Later, when the emerging company is ready to expand, it learns that someone else already owns its trademarks in other countries. These opportunists then typically seek to sell the trademark “back” to the emerging company. The negotiated price in these sales can vary considerably, but it virtually always will be many times more than it would have cost the emerging company to have register its brand name, logo, or slogan in that foreign country originally.
The best way for a trademark owner to protect itself from these dangers is by registering its marks in as many jurisdictions as possible. But since there are more than 200 countries in the world today — most with their own trademark registers, application procedures and, of course, costs — registering in all jurisdictions is impossible for all but the largest multinationals.

Until recently, a trademark owner wanting to fully protect its marks around the world had no choice but to file individual trademark applications in each of those jurisdictions. Though there is still no such thing as a “global trademark registration” two developments have helped reduce the burden on trademark owners.

In 1996, the European “Community Trade Mark” (the “CTM”), came into being and allowed trademark owners to secure protection in all 27 European Union member countries via a single trademark application.  The cost of a CTM is roughly the same as filing national applications in three individual European countries so if a company needs trademark protection in at least three EU countries, a Community Trade Mark is the more economical choice. For a company selling product throughout the EU, the CTM is by far the best choice.

The second development occurred in 2003 when the United States joined an international treaty called the Madrid Protocol. Under this treaty, if you own a trademark registration in your “home country,” you can apply for an “International Registration” and designate, in a single application, from one to 76 countries that are have also joined the Madrid Protocol.  Most of the world’s major economies have joined the Madrid protocol, with the notable exceptions of Canada, Mexico, Hong Kong (still a separate jurisdiction for trademark purposes),

Taiwan, India and all of South America, where protection still needs to be secured country by country.

In addition to these two relatively new vehicles, the Paris Convention —  to which most of the world, including the United States, belongs — can also sometimes be helpful. Under this Convention, trademark owners can take advantage of a six month “priority period” to file for a new trademark in one member country and then have a six-month window to file for the same trademark in any other member countries and have those later applications treated as if they had been filed at the same time as the first one. By way of example, an American company can file an application with the USPTO today for a new trademark, then wait up to six months to file elsewhere without any concern that some enterprising individual overseas might file a preemptive application for the mark. This delay period can be a useful tool for trademark owners with cash flow issues, such as many startup companies.

All three of these treaties (CTM, Madrid and Paris) can be used together. For example, a company may file an application in the United States for a new trademark and then, under the Paris Convention, wait close to six months before filing with the USPTO an application for an International Registration under the Madrid Protocol and, in that application, designate the European Union as one of the jurisdictions in which protection is desired.

Despite these treaties, protecting every trademark in every country oftentimes is still beyond a company’s budget. So how should a company choose where to seek protection first? When my law firm’s international trademark lawyers do this analysis, we analyze a host of factors.

First, where does the client company have its greatest foreign sales? Certainly it makes more sense to incur the fees and costs to register a trademark in a country in which sales exceed $1 million than in a country in which sales are less than $1,000. In which countries would the emergence of knockoffs hurt our client company the most? Where does our client company have manufacturing facilities (especially if the company uses outside vendors to manufacture its products)? Are there countries with notorious counterfeiting problems in our client company’s industry? Finally, and perhaps most importantly, in which jurisdictions would our client company suffer the greatest damage if it were precluded from using its trademarks because someone else had registered them first?

Often, once these questions are answered, if the company’s budget does not permit securing all desired protection immediately, our client company will adopt a plan to secure its international trademark protections in stages, covering the most important countries first, then another group in six or twelve months, and so on. Though this will mean temporary gaps in their trademark protection, these gaps will be the result of a conscious business decision, rather than a failure to identify the issue at all. Ignorance may be bliss but, at least in the trademark world, what you don’t know can indeed hurt you.

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6 responses to “International Trademark Protection in a Global Marketplace”

  1. A few additional points:
    1)There must be some non-token use within the first ten years of registration otherwise the trademark may be lost. The standard for ‘non-token’ here in the UK is very low (sales of a few hundred pounds over several years being enough), and in the rest of Europe is also low – use of the trademark on letterheads sent to customers has been enough, although purely internal use would probably be judged ‘token’. Other jurisdictions, however, may have higher standards.
    2) Whilst a registration in a territory (theoretically) forestalls other registrations, nowadays no-one examines UK or CTM registrations on relative grounds. This means that whilst a European Community registration is examined to see whether it fulfils the absolute grounds for registration (e.g., that it is capable of acting as a mark, that the registration is formatted correctly etc.), registrations of marks identical or similar to those already on the register will not be rejected.
    3) The Madrid system has two parts – the convention and the protocol. In both systems a national registration is used as a ‘root’ from which applications in other jurisdictions may be made. Under the Madrid Convention (i.e., not in the US or UK, but many of the Latin countries) the applications may be subject to ‘central attack’ in the first five years of the Madrid registration, whereby if the trademark is restricted or cancelled in the root country, all branch applications are equally restricted or cancelled. In Madrid protocol countries in the event of a central attack the branch applications can be ‘transformed’ into national registrations, but at a cost.
    4)European community marks (CTMs) are not always ideal, as they are cancelled throughout Europe. EU member states continue to maintain their own registries to which it is still possible to register national marks which cannot be cancelled in one go.
    5) As Dan has noted before, China has at least three registers – HK, Macau, and mainland PRC. There is also the register maintained by the ROC authorities to consider. Complete protection in all of these territories can only be achieved by registration in every one of these territories. A registration in Macau does not register your TM in mainland China, and a PRC registration is useless in Taiwan.

  2. There is a flipside to this. Business should be very careful to whom they license their brands. The more licenses a brand gives out, the more brand protection problems will arise.
    This is very true in China, where various licensees may be sourcing products from the same country. It can create a real nightmare when trying to track down the source of a product and determining whether or not a supplier is authorized.

  3. Which Comes First, The Trademark Or The OEM Contract?
    I am paranoid about my clients registering their trademarks in China, pretty much before they do anything else. For a few examples of my feelings on this, check out, “China Trademarks — Do You Feel Lucky? Do You?” “China Trademark Law: Simple And Effe…

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