International Trade Mark Expansion: Guidance On Expanding Your Trade Mark Protection To Foreign Markets
Many businesses put their intellectual property at risk when they start to trade internationally because they haven’t registered their trade mark in those foreign jurisdictions.
Even though infringements may be completely unintentional, the opening up of global trading through ecommerce can result in businesses breaching IP law in those countries in which they manufacture, market or sell their products.
For example, here’s an interesting look at ‘Made in China – What Businesses Should Know About Trade Mark Registration.’ This is an increasingly topical discussion, and we are seeing evidence of how infringements can have significant repercussions.
When you venture into a foreign market, you may find that you are infringing on another trade mark owner’s rights in that country or that you are transgressing trade mark law. For example, it is typically illegal to use the R symbol on goods that are sold in a country if the trade mark hasn’t been registered in that country. If your trade mark is registered in Australia, the use of this symbol needs to be considered when shipping overseas. You could also find that a shrewd competitor has already registered an identical trade mark in the very country or countries that you intend exporting to, thereby thwarting your expansion plans. You could even find yourself being sued for IP infringement.
Transgressions may be unwitting, but the fact remains that if you manufacture or sell your products internationally or are planning to expand into foreign markets, then you need to proactively secure international trade marks and legal protections for your IP in those foreign markets.
Why businesses should consider international trade mark protection
In my 20-plus years working in this field, I have come across many businesses whose expansion plans have been scuppered by inadequate IP protections and who have incurred significant financial losses as a result of having to defend allegations of trade mark infringements.
I’ve written this article to provide comprehensive guidelines as to why – and how – businesses should expand their trade mark protection to foreign markets. It covers all steps that entrepreneurs and business owners should take to protect their brands overseas and safeguard their market share, including:
- International trade mark searches
- Different processes for trade mark registration in other countries
- Trade mark validity
- Benefits of having an international trade mark
The bottom line is that business owners should expand their trade mark protection to foreign jurisdictions if they:
- Manufacture, sell or market products overseas
- Intend expanding into foreign markets in the future
- Intend licensing their registered trade mark to an international company
Where is an Australian registered trade mark valid?
There is no such thing as an ‘world-wide trade mark’.
A trade mark that has been registered with IP Australia only offers legal brand protections in Australia.
To ensure adequate brand protection and enforceability of your trade mark rights if you expand beyond Australia’s borders, you will need to register your distinctive mark in those regions in which you intend to manufacture, market or sell your goods. Failure to do so could put you at risk of trade mark infringement in those countries and could leave your brand vulnerable to unauthorised use.
Whilst a lot of processes are largely the same from country to country, it’s also important to know that each country likely has different trade mark registration requirements. For example, trade mark rights in some countries are granted on a ‘first-to-file’ principle, whereas other countries such as Australia operate on the ‘first-to-use’ principle. This article gives a comprehensive explanation of the different ways countries and jurisdictions determine trade mark ownership.
Now for some practical steps on how to expand your trade mark protections to foreign markets.
International trade mark searches
Every brand journey should begin with a trade mark search.
In the same way that you would conduct a comprehensive trade mark search prior to filing an application in Australia, you should also ascertain the availability of your unique brand in your intended international trade destinations.
MMW Trademark Services can do this for you and if we are unable to search any databases of other countries, we have established relationships with trusted international associates and would engage their services.
How to register your trade mark internationally
There are two ways to secure international trade mark protections.
The first is on a country-by-country basis through filing separate trade mark applications in individual countries. This is usually the best option if you only wish to pursue trade mark registration in a single country. Depending on the country/ies of interest, there may be other reasons this is the recommended filing strategy for your brand.
The second option is to apply for rights in multiple countries via a single application that is filed via the World Intellectual Property Organisation (WIPO) under the Madrid Protocol. This is a more cost-effective and efficient solution for registering and managing trade marks in multiple territories. Whilst registration of a trade mark, particularly in numerous countries, is an investment this article on how to register a trade mark internationally on a budget may be helpful for entrepreneurs and small business owners who are concerned about financial constraints.
It’s also worth noting that you don’t need a registered trade mark in Australia before applying for trade mark rights in a foreign country. However, if you intend on filing an international registration via WIPO you will need at least a filed application in your nation, as this forms the basis for the international registration.
How long is an international trade mark valid for?
As mentioned earlier, each country has its own trade mark laws and regulations. That said, most trade marks are valid for 10 years, effective from the filing date with the option for renewal. When using the Madrid Protocol, it is possible to ‘add’ countries to your existing registration after filing. For those territories, the registration may be shorter as you may opt to bring the ‘new country’ into line with the renewal date of the original filing.
Why international trade mark registration is so valuable
The benefits of international trade mark registration are many and varied.
We’ve already mentioned several of them, but it’s worth emphasising the value of securing full legal rights for your brand identity in any foreign countries that you are manufacturing, selling or marketing your products in – or which may be included in your future expansion plans. Failure to do so is financially risky and could undermine the viability of your brand.
Benefits include:
- Brand protection when trading internationally
- Prevents your brand presence from causing potential infringement issues in other countries
- Safeguards your unique brand identity, market share and reputation in both the short and long-term
- Helps to avoid unauthorised use of your brand in foreign countries
- Enables a trade mark owner to take swift legal action against infringers
- Future-proofs brand protection
- Eliminates having to alter your brand identity to avoid infringing on the rights of a foreign trade mark owner
A final word on international trade marks
Global trading is no longer the realm of big multinational enterprises. Thanks to online media and ecommerce, it’s now possible for any Australian business to market and sell their products to customers beyond our borders.
However, opportunity always goes hand-in-hand with risk.
Hopefully these guidelines on how (and why) you should expand your trade mark protection to foreign markets have been helpful, and know that our expert trade marks attorneys are more than happy to assist with any query you may have in this regard.
My recommendation is to make trade mark protection a priority, have a solid strategy in place which includes future-proofing your IP and auditing your trade mark portfolio regularly so that you stay ahead of the competition. Err on the side of caution.
For further guidance on international trade mark registration, you’re welcome to contact the MMW Trademark Services office on 03 8288 1432 for an obligation-free chat with one of our friendly and experienced trade marks attorneys.
