How to File an International Trademark When You’re Ready to Take Your Business Global
How to File an International Trademark When You’re Ready to Take Your Business Global
Congratulations on eyeing the international market for your business growth. We are living in an age of globalization and more and more companies are recognizing the profitability of taking their products and service offerings globally at a relatively small incremental cost. It is an easy calculus to recognize that international consumers are able to be reached with the power and affordability of internet advertising and complete more online purchases globally.
While your global business reach is expanding, it’s critical to understand the importance of trademark protection for your company and products brand in these international markets. Trademarks, including your company name, the name of your product or service offerings, logo, & tagline, can be among your company’s most valuable assets.
“more companies are recognizing the profitability of taking their products and service offerings globally at a relatively small incremental cost”
A trademark is a national right that requires registration in each country that you seek protection for your brand. Even if you have a registered US trademark, no international trademark protection exists for your registration. That means that even if you are using your brand name for business, if you did not file for foreign trademark registrations early enough, someone else can lawfully own the trademark in a particular country. We’ll discuss how to avoid that scenario as you look to grow your businesses and brands internationally.
1. Time is of the essence.
When dealing with trademark registrations, time is of the essence. Typically, many civil law jurisdictions rely on a first to file system to give priority to a trademark holder. This can happen because unlike the common law trademark system in the USA, where trademark rights accrue through use in trade and commerce, most foreign jurisdictions are governed by civil law systems. Given these circumstances, it is best not to delay filing trademark applications abroad, particularly if you intend to launch a product or service in the near future.
Oftentimes, one of the biggest issues business owners face when trying to register their trademarks outside of the USA is “brand squatting,” which describes the situation when an unaffiliated third party registers a brand owner’s trademark first in a jurisdiction only seeking to eventually sell the hostage trademark registration for a ransom to the true brand owner. As in the famous Starbucks case in Russia, where a Russian businessman made a living by registering trademarks and selling them to American companies, there are unscrupulous characters who will engage in “brand squatting” by identifying up and coming brands in the USA and then file applications first in civil law countries.
