In most countries, the regulations on trademarks are based upon a principle that allows the first registrant to own the trademark.
Thus, not registering a trademark involves two major risks:
- When being copied, it could be very challenging or even impossible to lodge a counterfeiting claim.
- When a third party registers the same trademark, thereafter it would become impossible to use the said trademark nor distribute any item bearing the trademark within the registered territory.
Even where the registration is executed in bad faith by a third party, it could be difficult to find sufficient material evidences to prove it. Henceforth, only a transaction involving financial consideration could allow, in the best-case scenario, for recovery of the trademark.
In order to obtain international trademark protection, the first step is to identify the strategic markets, which can be divided into three categories: the primary markets where the goods are distributed, the competitors’ markets where the direct competitors are implemented, and lastly the counterfeit markets where the trademark bears a high risk of being copied.
- Most of the time, companies and individuals protect their trademarks within their national territories. As soon as this first registration is completed, it would be best to anticipate and plan for international protection.
2. HOW TO PROTECT A TRADEMARK INTERNATIONALLY?
The national channel
It involves the registration of the trademark directly within the selected countries, by dealing with any competent national authorities. Thus, it is necessary to accumulate the registrations and to adjust to the different requirements of each country.
The multi-country channel
It is possible to register the trademark with multi-national Offices that would allow for a simultaneous registration in several countries. An example is the case of the European Union. In order to protect a trademark in the European Union, it is only needed to complete a single registration at the European Union Intellectual Property Office (EUIPO). This single registration allows for a 10 years renewable protection in the 28 member States of the European Union.
The international channel
International protection of trademarks is conducted within the framework of the “Madrid system”. The latter substantially simplifies the trademark registration procedure in 119 signatory states. Upon successful registration, the registrant will obtain a trademark for each designated country. Upon an initial registration in one of the signatory states, the registrant can request international extension of his trademark to any chosen countries. The World Intellectual Property Organization (WIPO) is in charge of forwarding the registration request to every country chosen by the registrant. These countries then proceed to review the request in accordance with their own applicable laws and regulations.
Resorting to international channel provides numerous benefits. The registration procedure is simplified and centralised, costs are reduced, applications and any related communications are conducted in the registrant’s chosen language (English, Spanish or French); and it is not necessary to appoint a local representative in each country. Nevertheless, the Madrid system is not void of complications and vulnerabilities. In the designated countries, the international trademark is linked to its originating national trademark for a period of 5 years starting from the date of registration. Hence, when losing the rights to the original trademark, the corresponding rights to the international trademark would result in becoming void too in every designated country. This is the reason why it is essential to choose carefully the origin office from which the request for extension will be formulated.
Ideally the origin office must be:
- An office that promptly assesses trademark registration requests.
- An office in position to accept the trademark in question. Where aware of strict norms applied in a country and that the trademark in question may be subject to objections, it is better to avoid basing an international registration request on a trademark registered in that country.
- An office where no known third party is likely to oppose to the trademark registration. In other words, it is better to choose a country where competitors are not present and where there is no similar trademark registered.
- An office for which the specification of goods / services is as large as possible.
3. HOW WE CAN HELP?
Anne-Sophie Maurel can help you with:
- The preparation and filing of your trademark registration in Hong Kong, Singapore, with the EU office of trademark or the World Trademark office.
- Registration of trademark licence.
- Assignment of trademark.
Anne-Sophie Maurel (Hong Kong)
+852 5232 6670
Maëva Slotine (Hong Kong)
The material contained in this article is provided for general purposes only and does not constitute legal or other professional advice.