In an international marketplace trademarks should be protected and enforced in key markets. International trademark strategy has two primary components. The first component involves acquiring and protecting trademark rights. The second component is making sure that your trademarks are not infringing a mark protected in a foreign jurisdiction. Your international trademark strategy should reflect the concerns and conditions of your company, your target markets, and your industry. Your company concerns involve considerations such as: marketing strategy, budget, distributor relationship, and risk management. A trademark strategy should likewise be informed by the laws, policies, and cultures of the target countries you plan to enter.
The International Marketing Plan
Understanding and refining an international marketing plan is critical to developing an effective international trademark protection strategy. The following five steps should be considered when refining your international marketing plan. First, define the geographic area of your target market. Second, identify the target markets of immediate importance. Third, identify target markets of secondary importance. Fourth, develop a timetable for entering into specific target markets. Fifth, create a budget to spread costs over time, if possible. When defining target markets, don't forget to account for worldwide Internet sales if appropriate.
Trademark Law in Other Countries
Because of the national, regional, and international components of international trademark protection strategy, local and national laws as well as international agreements and treaties must be considered. Other relevant factors relate to a particular country's intellectual property trends, culture, and local policy.
Trademark law throughout the world can be grouped roughly into two categories. The first category is based on what is called the "first-to-use" rule. The second category is based on what is known the "first-to-file" rule. The United States follows the first-to-use rule. China, for example, uses the first-to-file rule.
In first-to-use countries, trademark priority is given to the first party that actually uses the mark in that particular country. In first-to-file countries, on the other hand, trademark use alone will not establish any rights to a mark. As a matter of practical importance, consider the risk that a junior user will register your mark and prevent you from using it in many first-to-file countries (this might happen even though you were the first one to actually use the mark).
Sometimes, strategic trademark filings can be used to minimize the risk posed by "mark sharks." Additionally, some countries offer what is known as a defensive mark filing. When allowed, an applicant does not need to intend use of the defensive mark in the filed for country if use of the mark by another party in the country, even on dissimilar goods, would be likely to cause confusion. In many cases, strategic filings and defensive marks can be used to preserve rights in countries where future use and marketing is anticipated, but where there is no immediate intention or ability to enter a particular market.
Evaluating Marks for International Markets
Once you have identified your marketing strategy and researched the trademark laws and policies of your target countries, you need to insure that your trademarks are protectable in those target countries. Analyzing the protectability of a trademark in a particular target country involves searching to identify any existing marks, registered or unregistered, that are confusingly similar to your mark. As well you must consider whether your mark will be considered distinctive under a particular target country's trademark law. It is safe to say that internationally, as well as in the United States, marks vary in their protectability as well as their registrability. The protectability of trademarks ranges on a continuum from very protectable to not protectable at all. Marks that are considered arbitrary, fanciful or suggestive in relation to the goods or services in which they are used are considered distinctive and are very protectable. Marks that are descriptive of the goods and services in which they are used are less protectable, and generic terms are not protectable or registerable at all. Determining the relative distinctiveness and protectability of a trademark will vary, however, from country to country. Marks that may be considered sufficiently distinctive for registration in the United States may be considered descriptive or generic in other countries. Conversely, in many cases marks that are considered descriptive or generic in the United States may be registerable in other countries. Oftentimes we utilize specific international searching strategies and the expertise of foreign associates to help evaluate particular cases.
Taking Advantage of International Treatise and Conventions
There are a variety of international trademark treaties and conventions. Different conglomerations of countries around the world have joined various collections of trademark treaties and conventions. The Paris Convention and the Madrid Protocol are among the more famous of these trademark treaties which the US has become party to. The Paris Convention allows you to use a filing date from an earlier application on a new application when both countries are members of the Paris Convention and when the second filing occurs within six months of the first filing; the Madrid Protocol provides central administration for a single application to register an international trademark in multiple participating countries. The European Union also has special rules and regulations for registering Europe-wide trademarks. Of course there are different costs, benefits, and strategies involved with taking advantage of different international trademark treaties, conventions, and agreements.
Strategy and Recommendations
If cost is not an issue, you should consider filing trademark applications in all target countries at the same time using the broadest possible description of goods and services allowed in each country. When cost is an issue, Paris Convention priority filings can be used to help spread costs over a six-month period, and the Madrid Protocol allows for a single application across multiple participating countries. Lastly, evaluate your marketing plan in light of the advantages and disadvantages of filing for trademark protection under particular trademark conventions, treaties, and agreements, and the trademark regulations of the European Union.
International Trademark Marking Requirements
In many countries around the world, use of the ® is either optional or there is no provision for marking. In some countries, like the United States, specific benefits are offered for using the ® appropriately, such as eliminating certain damages defenses. In other countries, like China, Chile and Costa Rica for example, a proper registration notice is required in order to maintain the registration and trademark rights. There is a danger, however, of using the ® too freely in your international packaging. In some countries false or misleading use of the ® can result in fines, imprisonment, and other liability (e.g. Germany).
International Trademark Registration Protection
Trademark protection involves identifying and stopping other companies from using similar or confusing marks on related goods or services. Trademark protection also involves monitoring third party applications in target countries and opposing any similar registration applications. Protecting trademark rights also involves keeping track of reported consumer confusion between your marks and your competitor's marks. Cease and desist letters to potential infringers and, when necessary, filing suit against potential infringers is also helpful in protecting trademark rights.
The first component of international trademark strategy involves acquiring and protecting trademark rights. The second component of international trademark strategy is making sure that your trademarks are not infringing a mark protected in a foreign jurisdiction. Your international trademark strategy should reflect the concerns and conditions of your company, such as marketing strategy, budget, distributor relationships, and risk management. In addition, your international trademark strategy should reflect the conditions of your industry and your target markets, including the laws, policies, and cultures of your target countries.