Should I Protect My Trademark Internationally?

Given the nature of today’s global and online marketplace reality, international trademark protection is increasingly critical. A careful international trademark strategy helps your company expand and leverage your brand and business, while failing to protect your trademarks abroad can damage and dilute valuable assets and competitiveness.

Why is international trademark protection important?

Trademarks, including your company name, the name of your product or service offerings, logo, tagline, or even your product and package design, can be among your company’s most valuable assets. A strong and well-protected trademark embodies the public goodwill, brand reputation, and consumer recognition that you’ve worked hard to build.

However, trademarks rights are territorial, meaning that they are only granted on a country-by-country basis. Having trademark protection in the US does not protect or confer rights to your brand name in other key markets such as Canada, China, or the European Union (which can constitute a unitary jurisdiction). Furthermore, in most countries, the only way to acquire recognized trademark rights is by filing for a trademark registration, which is often given to the first applicant regardless of the applicant’s (or any other company’s) commercial use of the mark. That means that even if you are using your brand name for business, if you did not file for foreign trademark registrations early enough, someone else can lawfully own the trademark in a particular country

Where should I file foreign trademark applications?

Foreign filing considerations are largely business decisions. The most important target jurisdictions are those that are or will be commercially significant for the company. In choosing where to file, consider:

• What countries have sizeable revenue streams or consumer bases for your company?
• Do you have business operations (e.g. offices, distributors, partnerships or manufacturers) overseas?
• Is your company’s relevant market or targeted need growing or significant in a particular country or region?
• Are there key markets for underlying/companion platforms (e.g. if you are an iOS app developer, look at key markets for iPhone saturation)?
• Do you have anticipated expansion plans abroad?
• Consider “defensive” filings in countries with high rates of counterfeits, copycats and piracy like China, Brazil and India.

What is “priority”?

“Priority” refers to how early your trademark rights start in a particular country. Having early priority is important because if multiple parties dispute over who has the right to use a particular brand name (e.g. you discover a competitor using a similar name), whoever has the earlier trademark priority would have the right to use the trademark.

In most foreign countries, your trademark priority starts from the date of filing a trademark application—so the sooner you file, the earlier your trademark priority. A major international treaty provides that, subject to certain conditions, all foreign filings made during the six-month window immediately following the initial (e.g. US) application date shall be treated as if they were filed concurrently with the first application.  In other words, an applicant can make several “priority” foreign filings within six months after the initial filing, and all of those applications will have priority as if they were filed in the foreign jurisdiction on the date of the US application . This gives trademark owners six months after the initial application to finalize their international trademark strategy and spread out further filing costs.

To be clear, foreign trademark applications can be filed at any time, but those filed after the priority deadline will not have earlier priority of the initial application. So you should carefully consider taking advantage of this priority benefit for key jurisdictions.

What happens if someone else registers my trademark in a foreign country?

If another party “takes” your trademark first in a foreign country, it could cause numerous problems:

• The registrant may disrupt the manufacture, shipment, or distribution of your products in or from the country
• You may lose the exclusive right to use the mark
• The registrant may use, or license others to use, the trademark on a competing or copycat product
• The registrant may hold the trademark “hostage” and extort a high purchase price from you
• You may need to adopt a different brand name in the country (which means your company won’t have a “global brand” and the established goodwill and recognition of the brand will not carry over)

Popular filing mechanisms

Foreign filing options vary by country, but there are three key mechanisms that you should know:

• National filings: direct filings in individual countries
• Community Trade Mark (CTM): covers all 28 member countries of the European Union with one centralized filing
• Madrid Protocol: centralized filing mechanism with initial cost and administrative efficiencies; not available in some countries. Also, Madrid Protocol filings are subject to additional restrictions and risks such as some limitations on transferring the foreign filings in the future and the foreign filings becoming vulnerable if the related initial filing encounters issues or challenges.

In sum, international trademark filings can be critical to establishing and protecting your business in foreign countries.  Securing and protecting your trademark internationally from the outset can save you much time, money and heartburn later, so you should carefully consider foreign filings during the six-month priority period.