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Applying for Trademark Protection Internationally

Generally, filing and registering a trademark in your home country, grants you protection in that jurisdiction and no more.

Consequently, trademark protection in your home jurisdiction does not prevent another person from filing the same trade mark as yours overseas.

You do therefore need to consider global registration if your business is expanding overseas. Global trademark protection, however, can get expensive.

There are plenty of examples, however, where failure to file for protection in an overseas jurisdiction has proved very costly for a company.

Example: Burger King is called Hungry Jack’s in Australia because at the time of expansion into Australia during the 1970s, the name was already taken by a takeaway food shop in Adelaide.

Example: In Spain, Corona is branded as “Coronita” (meaning little crown) because the winery Bodegas Torres  owns the trademark Corona for alcoholic drinks, not Corona.

Example: The US tech giant Apple lost its trademark in Brazil because the Brazilian Trademark Office held that a Brazilian company, Gradiente Electronica, owns the “iphone” trademark in Brazil as it had registered the name seven years prior to the iPhone’s release.

Example: Pfizer does not own the Chinese language trademark  “Wei Ge” by which Viagra is best known in China after losing the lawsuit it filed in China against a Guangzhou based drug company who filed and registered the name before Pfizer.

Example: Claims in China to the name “Justin Bieber”.

W3IP Law-Justin Bieber-China

In some countries, such as Australia and the United States, trademark rights accrue as soon as there is use of a trademark. These unregistered rights are recognised under the common law. In other jurisdictions, there is a “first to file” rule so that trademark rights only start accruing from the date of filing whether or not there has been use of the trademark before filing with the effect that “first to file” wins.

There are various options for protecting trademarks on an international level including filing directly into overseas countries where your business expects to supply its products or services or filing under an international treaty such as the Madrid Agreement to file for a foreign trademark on the basis of your home application or registration.

Startups who do not have the flexibility of a large budget should take a conservative approach to filing for trademark protection overseas.  A strategic approach will be to protect your trademarks in the countries where products or services are going to be effectively supplied, and to expand from there.

The cost of registering a trademark is always going to be small compared to the time and expenditure a company could end up paying in lost opportunity and legal fees to fix the problem of another person appropriating your brand and trademark overseas.

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Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

2 thoughts on “Applying for Trademark Protection Internationally

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