Trademark Protection for International Companies
Thinking your trademarks are safe just because you registered them? Think again—especially if your business is expanding abroad.
Trademark protection is crucial for companies manufacturing and distributing products overseas. While many large multinationals have armies of lawyers monitoring their intellectual property rights (IPR), small- and medium-sized businesses expanding internationally often need outside legal assistance to determine the best and most cost-effective ways to protect their trademarks, patents, and copyrights.
What often surprises my clients about international trademark protection is that the process requires continuous management on their part.
Preliminary Considerations for International Trademark Protection
Prioritizing Trademarks with Limited Budgets
For companies with limited budgets, the first step is to decide which trademarks to prioritize for international protection. When determining which trademarks to protect, most companies’ international portfolios build upon their national ones—that is, trademarks that are already protected in the company’s home country.
However, building an international trademark portfolio usually requires more than just replicating the home country’s portfolio in other jurisdictions. For example, when I was working in China, I managed the local trademark portfolio for a well-known UK brand. This company’s China trademark portfolio was much larger than its UK portfolio, partly because, back then, there were no multi-class applications in China. A single UK registration could turn into a dozen Chinese ones. Additionally, with IP theft being much more rampant in China than in the UK, this company rightly believed it needed more Chinese trademarks to secure greater brand protection.
Local Market Differences
Protection for Unregistered Trademarks
ference when it came to minor marks, like old logos and advertising slogans. For obvious reasons, logos and slogans not currently in use are less attractive to counterfeiters, making it less likely that any fakes would appear, and enforcement would be necessary.
If an infringement occurred in the UK, my client could rely on common law rights to protect its trademarks. But in China, a registration would be required to protect the trademark. The cost-benefit analysis made it worthwhile to register these minor marks in China, but not in the UK (or the U.S., for that matter). See China Trademarks: Register Yours BEFORE You Do ANYTHING Else.
The Importance of Language-Specific Marks
A similar situation came up with Chinese-language marks. Only about one percent of UK residents would recognize the client’s name in Chinese, while in China, at least 50 million people likely would. For some companies, trademark protection actually drives their branding for a foreign market. Even if a company would prefer to stick to its original name in Latin characters, market considerations might make it a smart move to develop a name in Chinese (or Thai, or Marathi).
Those familiar with doing business in Asia know that very few foreign companies translate their brand names into Japanese (since Japanese has a special syllabary that aids in the pronunciation of foreign words). Meanwhile, in China, nearly every brand name is translated into Chinese—and finding the right translation is big business.
The Trademark Registration Process
Filing Trademarks Through the Madrid Protocol
Once a company decides which trademarks it wants to protect in a particular overseas market, the next step is registration. This process can vary greatly depending on the product and jurisdiction, and it can be a source of frustration. Some companies can take advantage of an international treaty called the Madrid Protocol, which allows trademark owners to apply for an “International Registration” and designate, in a single application, from one to 121 countries that have also joined the Madrid Protocol. Madrid Protocol members handle over 80% of the world’s trade.
Once a company decides which of its trademarks it wants to protect in a particular overseas market(s), the next step is registration. This process varies a lot depending on the product and jurisdiction, and it can be a source of frustration. Some companies can take advantage of an international treaty allows trademark owners to apply for an “International Registration” and designate, in a single application, from one to 121 countries that have also joined the Madrid Protocol. Madrid Protocol members handle over 80% of the world’s trade.
When to Use the Madrid Protocol
As a general rule, if you’re filing in three or more countries, it’s usually cheaper to file through the Madrid Protocol. However, some countries do not accept Madrid Protocol filings, and in others, it can be less effective. SeeChina Trademarks: Register via Madrid or in China?
If you’re filing in just one or two countries, it will almost always be more cost-effective to file directly in those countries. Plus, it’s important to remember that an International Registration application designating a specific country will ultimately be approved (or denied) by the authorities in that country. If your international expansion is targeting just one or two countries, it makes sense to get professional advice that maximizes your application’s chances of success in those markets.
Post-Registration: The Work Doesn’t Stop
Some companies assume that there’s no “management” required after registration. However, there’s still plenty of work to be done, including:
Complying with Trademark Use Requirements
These vary from country to country. As companies allocate limited resources, legal advice on these requirements is critical. For example, the need to use a trademark in Country A might influence whether or not to expand further there or in Country B.
Actively Protecting Your Trademarks
Companies must actively protect their trademarks. When I was working in Hong Kong, I’d regularly visit the street markets where counterfeits were sold. It was fascinating to see how blatantly some brands’ fakes were displayed, while others were harder to spot. It was clear that infringers knew where they could expect enforcement and where they were safe.
Support for Law Enforcement
Registering your trademarks is just the beginning. Most law enforcement agencies are cautious about pursuing counterfeiters without firm assurances that the brand will support them in obtaining a conviction. In some countries, you must practically spoon-feed information to law enforcement before any action is taken. All of this requires effort from companies, either directly or through trade associations.
Monitoring Your Trademark Licensees
When licensing your trademark to a foreign company, be sure you’re not inadvertently giving your licensee a path to claiming ownership of your trademark. It’s crucial for companies that license their trademarks to monitor how those trademarks are being used, ensuring compliance with both trademark laws and the terms of the licensing agreement.
Auditing Your International Trademark Portfolio
Portfolios need regular audits to identify gaps and ensure compliance with all legal requirements. Items to check include coverage of all relevant classes, expiration dates, compliance with use requirements, and the inclusion of new terms used to describe the brand in local markets.
Cross-Border Trademark Enforcement
Enforcing trademark rights across borders can be challenging due to jurisdictional differences, varying legal frameworks, and the complexities of international trade. Each country has its own set of laws regarding trademark protection, which can make it difficult for companies to effectively stop infringers operating outside their home jurisdiction.
For businesses expanding globally, it’s crucial to have a well-planned strategy for enforcing trademarks across different countries to protect brand integrity and prevent revenue loss from counterfeit goods. Effective strategies for cross-border enforcement include a combination of legal measures, international cooperation, and leveraging relationships with local authorities.
International Cooperation Agreements
Leveraging international cooperation agreements between countries can greatly enhance a company’s ability to protect its trademarks across borders. These agreements often provide a framework for sharing information and resources between governments, making it easier to conduct investigations and coordinate enforcement actions.
For example, treaties like the World Intellectual Property Organization’s (WIPO) Paris Convention or the TRIPS Agreement under the World Trade Organization can play a significant role in facilitating cooperation between countries. Through these agreements, a company can request assistance from local authorities in investigating suspected trademark violations, gathering evidence, and even enforcing judgments across borders.
This type of collaboration can significantly speed up the enforcement process and help ensure that counterfeit goods are seized before they reach the market.
Legal Proceedings in Foreign Jurisdictions
In some cases, it may be necessary to initiate legal proceedings in foreign jurisdictions to protect trademark rights. This step can be complex and costly, but it is sometimes the only way to effectively stop infringement or secure damages from violators.
Legal action in a foreign country requires a thorough understanding of local trademark laws, procedural rules, and the nuances of that country’s legal system. Companies should be prepared to work closely with local legal counsel to navigate these challenges, as even straightforward cases can involve unfamiliar legal procedures and language barriers.
Additionally, companies need to understand that obtaining a favorable judgment in one country does not automatically mean it will be enforced in another. Some countries have specific requirements for recognizing and enforcing foreign judgments, making it important to plan carefully when choosing where to initiate legal actions.
Working with Customs Authorities
Working with customs authorities is a key part of preventing the importation and distribution of counterfeit goods. Customs officials can play a frontline role in enforcing trademark rights by identifying and seizing infringing products at borders before they enter a country’s market.
To leverage this, companies can record their trademarks with customs agencies in key markets, such as through China Customs IP Recordation for protecting intellectual property in China. This recordation allows customs officers to monitor imports and exports for unauthorized use of registered trademarks. By collaborating closely with customs authorities, businesses can provide training and guidance to officials on how to spot counterfeit products, making it easier for them to identify and stop these goods before they reach store shelves.
Additionally, customs can impose fines or penalties on importers of counterfeit products, providing a strong deterrent against future violations. This proactive approach can save companies time and money that might otherwise be spent on litigation and helps maintain the integrity of their brand in international markets. See Safeguarding Your Intellectual Property in China: A Guide to China Customs IP Recordation.
Additional International Trademark Considerations
In addition to the steps outlined above, you should consider the following when protecting your trademarks internationally:
Trademark Registration Costs
The costs associated with international trademark registration can vary depending on the number of countries, the complexity of the application process, and the services of legal professionals. It is essential to budget for these costs and consider the potential return on investment.
Our law firm sometimes get companies who ask us to register their trademarks to give them “global protection.” One of our international trademark attorneys will usually respond to this question by saying, “Do you want to spend $10,000 to protect your trademark in Afghanistan?” And then upon learning that the answer is no, he will then say, “I thought that would be the case. Now we together need to figure out what countries are most important to you. In what countries do you sell the most product and in what countries do you manufacture your products?”
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The Risks of Failing to Protect Your Trademarks
Failure to protect trademarks can lead to significant risks, such as brand damage, lost sales, and legal disputes. Counterfeit products can also pose safety risks to consumers, tarnishing the reputation of the legitimate brand.
The Role of International Trademark Attorneys
Engaging with experienced international trademark attorneys can be invaluable in navigating the complexities of foreign trademark laws and regulations. Attorneys can provide guidance on registration procedures, enforcement strategies, and risk mitigation. It generally makes sense to put one international trademark lawyer or law firm in charge of overseeing all of your trademarks around the world. This one lawyer or law firm will then be tasked with knowing about all the trademarks you have registered anywhere in the world and also tasked with making sure that action is taken in advance of any trademark renewal dates.
Final Thoughts
Yes, all this may sound like a lot of work, but you expected that when you expanded your business to international markets, right? With the right strategies and expert guidance, navigating the complexities of international trademark protection can become a manageable—and essential—part of your global business success.
Please reach out to us if you’re considering international trademark assistance—we’re here to help.
