General Considerations for International Trademark Portfolios

Given the increasing globalization across all industries, brand owners must evaluate their trademark protection strategies on an international level. While there are a number of international treaties and regional filing systems, the legal framework of international trademark protection and enforcement generally consists of a collection of national laws and local trademark registries. The following are various issues for brand owners to consider when looking to protect their trademarks in the foreign territories they do business.

Budget

International trademark protection can be a complicated and expensive process, so one of the primary initial considerations is the budget. While there are some regional filing options such as the Madrid Protocol and Community Trademark in the EU (see article “Pros and Cons of Madrid and other Options” for more information), a company’s international trademark portfolio is often comprised of individual country filings. In addition to the legal fees for due diligence and application drafting for each territory and the government filings fees for each mark for each class of good, brand owners must monitor the use of their marks and enforce their rights against third party users or risk abandonment. The costs can start to add up very quickly.

Therefore, the budget is critical to the evaluation of an international filing plan, and the only way to develop a cost-effective plan is to structure it around the current and prospective business operations of the particular good or service in the foreign territory.

Note, for marks that are copyrightable such as design marks, the brand owner may consider also filing a US copyright application, which will provide it some international protection via the Berne Convention, an international treaty that require all signatory countries to adhere to a standard level of copyright rules, including infringement by third parties. Thus, where a budget may not permit registration in all desired countries, a copyright registration may afford certain similar protections as trademark.

Purpose

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SHAHROKH SHEIK
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Practice Areas
Business/Corporate
Entertainment/Media
Trademark/Copyright

Also, what is the intended purpose for the foreign filing? Are you looking to register a mark in a foreign territory to protect against potential claims of trademark infringement by third parties in that territory, or does the mark represent a valuable and popular brand that you plan to pursue your rights against third party infringers in that territory, or both? The later normally will require the use of local resources to actively monitor and enforce rights against unauthorized usage in the marketplace.

In addition, international registrations provides brand owners greater licensing opportunities. For example, where a brand owner is unclear on how to enter and operate a foreign market, it may elect to license the mark to a foreign company to manage the local distribution. And registration of a valid trademark in the foreign territory will provide the brand owner and the license a more clearly defined business and legal framework to exploit the mark successfully.

Selection of Marks and Territory

A company does not need to obtain international trademark protection for each and every domestic trademark it owns. A word mark and a design mark, e.g., the company name- Apple (word mark), and the Apple logo (design mark), are separate trademarks that must be registered under each class of good or service in which the mark is used.

Brand owners should be strategic in their filings. They do not need to file every mark in every country at the same time. Rather, international trademark filing strategies should be based on factors such as what territories they are selling in or plan to expand to, when they plan they plan to launch in a territory and how long do they plan to use the mark in the territory. Also, a big factor is how much revenue they generate or project to generate in the territory.

Once we identify the top key markets they will generate the most revenue from, the next step is to conduct a comprehensive conflict check with local counsel to determine potential issues with registration. In addition to potential conflicts, we must analyze other potential issues such as descriptiveness, ornamentality, use of geographic indicators, and any other regional specific issues that may exist. For instance, unlike the U.S., you cannot register slogans in the EU. So an alternative may be to register the slogan as a design mark, but you need to ensure there is sufficient usage of the mark as a trademark; otherwise, it will be rejected for non-use.

Conclusion

When we advise clients on international trademark filing strategies, it is important to know the client’s overall business operations, goals and objectives and available resources in order to develop and implement the most effective and cost-efficient plan.