International Trademarks Strategy By Timothy B. McCormack Attorney at Law

International Trademark Law Strategy

International trademark strategy has two primary components. The first component involves acquiring and protecting trademark rights. The second component is making sure that one’s trademarks are not infringing a mark protected in a foreign jurisdiction. An international trademark strategy should reflect the concerns and conditions of one’s company, one’s target markets, and one’s industry. Company concerns involve considerations such as: marketing strategy, budget, distributor relationship, and risk management.

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 an international marketing plan. First, define the geographic area of the 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 or your client from using it in many first-to-file countries (this might happen even though your client was 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.

Taking Advantage of International Treaties 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. The Paris Convention allows one 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 United States is not part of the Madrid Protocol. However, if the United States does become a member, United States companies will be able to take advantage of new rules and procedures for some international trademark matters. Some United States companies incorporate a foreign subsidiary in a Madrid Protocol country when they anticipate filing large volumes of trademark work in the countries that are members of this protocol. The European Union also has special rules and regulations for registering European wide trademarks. Of course there are different costs, benefits and strategies involved with taking advantage of different international trademark treaties, conventions and agreements.

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 on one’s international packaging. In some countries false or misleading use of the ® can result in fines, imprisonment, and other liability. Germany is one example.

International Strategy And Recommendations

If cost is not an issue, business owners doing substantial international business 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. Lastly, business owners should consider evaluating marketing plans in light of the advantages and disadvantages of filing for trademark protection under particular trademark conventions, treaties, and agreements, such as the Madrid Protocol and the trademark regulations of the European Union.

Conclusion

The first component of international trademark strategy involves acquiring and protecting trademark rights. The second component of international trademark strategy is making sure that one’s trademarks are not infringing a mark protected in a foreign jurisdiction. An international trademark strategy should reflect the concerns and conditions of one’s company, such as marketing strategy, budget, distributor relationships and risk management. In addition, one’s international trademark strategy should reflect the conditions of one’s industry and one’s target markets, including the laws, policies and cultures of one’s target countries.