Merrill Brink News Reviews and Opinion on Apr 29, 2015: Tips for Registering, Protecting and Defending Trademarks Internationally

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http://www.merrillbrink.com -- Brand and intellectual property protection becomes more important—and more complex—than ever when companies choose to offer their products and services in foreign markets.

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The majority of countries incorporate the “first-to-file” into their trademark laws, meaning the first company to register the trademark can claim it regardless of when they plan to use it.

Brand and intellectual property protection becomes more important—and more complex—than ever when companies choose to offer their products and services in foreign markets. One of the first steps you may choose to take is to register your trademarks in each country in which you plan to market. This helps to prevent competitors from exploiting your brand for their own gain, and also reduces the chances that other companies will accuse your company of doing the same to them and take legal action against you.

The following sections provide an overview of the steps to take to protect your brand’s identity and reputation abroad.
1. Research Trademark Law and Existing Trademarks in Each Target Country
Before beginning the registration process, you must first make sure that no other company has already registered your mark (including its permutations and ones similar to it) in your target countries. If such a company exists and its products or services are not related to yours in any way, you should still be able to register your trademark without opposition. If, however, the company is a potential competitor, you may need to use an alternate trademark in the countries where its trademark is registered.

It is also important to determine whether your target countries follow the “first-to-file” or “first-to-use” doctrine. The majority of countries incorporate the “first-to-file” into their trademark laws, meaning the first company to register the trademark can claim it regardless of when they plan to use it. In contrast, some countries, including the United States, follow the “first-to-use” principle, where a company can claim a trademark if it can prove it was the first to use it publicly.1 Doing your research into these and other aspects of local trademark laws can help you anticipate potential challenges that may arise when registering your company’s brand.

2. Register the Trademark
You can begin the registration process after you’ve researched the trademark requirements and identified any existing trademarks similar to yours in each target country. Depending on your business plans and the target countries in consideration, you may want to register with several countries at once through an existing trademark agreement in which those countries participate. For example, if you conduct business in several European Union (EU) countries, you can register for a Community Trade Mark (CTM) that protects your brand across all EU countries. However, if one EU country rejects your application, which you can submit in any of the EU’s 23 official languages, you will not be granted a CTM.2,3

Similarly, through the Madrid System, as administered by the World Intellectual Property Organisation, you can register your trademark in the 92 participating countries via a single application in English, French, or Spanish. In contrast with the CTM, your trademark will be honored in the countries that approve your application, regardless of which countries reject it.4 If your target country does not participate in the Madrid System or a similar multi-country trademark arrangement or if you’d rather focus your intellectual property protection efforts on a single country, you can register your trademark directly with that country by following its trademark office rules. Note, however, that you may be required to translate your application materials into that country’s official language or languages.

3. Maintain, Renew and Defend Your Trademark
Once your trademark application has been approved, make sure you renew the trademark when it expires. The length of time for which a trademark is valid depends on where and how you registered it. CTMs expire 10 years after their registration dates, as do trademarks submitted via the Madrid System.5,6 If you registered with a specific country, find out how long your trademark is valid and plan ahead, because terms vary by country. For example, trademarks registered directly with Canada and Japan are valid for 15 and 10 years, respectively.7,8 As long as your trademark registration remains valid, you’re in a position to defend it from others seeking to capitalise on your brand’s reputation.
Although your legal team should research the trademark laws in place for each target country, it’s wise to keep these points in mind to ensure a smooth registration process and the effective protection of your trademark abroad. Also, consider retaining the services of a language translations provider with translators who are knowledgeable about the intellectual property laws of your target countries. This will help to guarantee that your registration materials accurately describe your company’s claims.

References
1 Lichun Zhao, “How to Use International Registration to Avoid Overseas Trademark Squatting,” Lexology, posted March 13, 2013, http://www.lexology.com/library/detail.aspx?g=6bd47b6c-b64f-416b-843e-15b4cddcb8d8
2 “2. Application Procedure,” Office for Harmonization in the Internal Market website, https://oami.europa.eu/ohimportal/en/application-procedure#2.A.5
3 “Trade Marks in the European Union,” Office for Harmonization in the Internal Market website, https://oami.europa.eu/ohimportal/en/trade-marks-in-the-european-union
4 “Objectives, Main Features, Advantages of the Madrid System,” World Intellectual Property Organization website, http://www.wipo.int/madrid/en/general
5 “Manage,” Office for Harmonization in the Internal Market website, https://oami.europa.eu/ohimportal/en/manage
6 “Objectives, Main Features, Advantages of the Madrid System.”
7 A Guide to Trademarks, Canadian Intellectual Property Office website, http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html
8 “System of Industrial Property Rights,” Japan Patent Office website, https://www.jpo.go.jp/cgi/linke.cgi?url=/seido_e/s_gaiyou_e/4houe.htm

Full Article: http://www.merrillbrink.com/protecting-our-trademarks-abroad-04272015.htm

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