What You Need to Know About International Trademark Protection
Given our increasingly global economy, even small businesses should consider international trademark protection. Failing to protect your brand when conducting business overseas can lead to costly legal disputes.When a business registers a trademark with the U.S. Patent and Trademark Office (USPTO), the legal rights are limited to the United States. Thankfully, it is becoming easier to extend trademark rights to other countries around the world.
Proactively Protect Your Marks
Defensive registration is extremely important with respect to trademarks, particularly because many countries give priority to the first to file. Under “first to file” systems, trademark rights are generally bestowed on the first entity to file an application. With this in mind, there is incentive for brand counterfeiters and hijackers to pursue trademark rights ahead of U.S. companies.
“When a business registers a trademark with the U.S. Patent and Trademark Office (USPTO), the legal rights are limited to the United States.”
In countries like China, for example, major brands have been forced to buy back a registration, which can be extremely expensive and time consuming. Given the potential legal headaches, businesses should identify key international markets and then begin the process of obtaining trademark protection as soon as possible.
Do Your Research
Once your business has identified the key markets where trademark protection is needed, it’s time to do some research. To start, it is imperative to verify that another entity is not already using an identical or confusingly similar mark.
“Businesses should be sure to assess how well their brand names and slogans will translate into other languages.”
The Madrid system makes it possible to register a mark in several territories through one procedure. The system is administered by the World Intellectual Property Organization (WIPO) and governed by two international treaties, the Madrid Agreement and the Madrid Protocol.
It allows trademark owners to file one single application to secure trademark protection in more than 100 different countries. Accordingly, it also avoids the need to comply with different national procedural rules, translate applications, retain local agents, and pay several different fees. Upon receipt of the trademark application, WIPO notifies all of the Madrid Protocol countries in which registration is sought. If the member country fails to object within twelve to eighteen months of being notified, the trademark is registered.
Renewing Your Trademark
Renewal is also more manageable under the Madrid system. The required fees need only be paid every 10 years to the International Bureau of WIPO rather than several national trademark offices. Additionally, if the international registration is assigned to a third party or a change in name and/or address occurs, it only needs to be recorded once with the WIPO.
What to Look Out For
While the Madrid system offers many advantages, trademark owners utilizing the Madrid Protocol must be cognizant of their trademark rights. The rights granted by an international registration can be extinguished if the home national application in which the international registration is based on does not mature to registration if the international registration’s home national registration is cancelled during its first five years.This concept is called a “central attack.” If either of these situations were to occur, trademark owners may opt to transform an international registration into national applications in each of the contracting parties in which the international registration had effect, which would allow for the preservation of the priority date of the international registration.
Are you still unsure about international trademark protection? Would you like to discuss the matter further? If so, please contact me, Adrian Lee, at 201-806-3364.
Section 363 Sales in Bankruptcy: What Businesses, Lenders, and Buyers Need to Know
When a company enters Chapter 11 bankruptcy, many assume the process will culminate in a lengthy reorganization plan. However, distressed businesses are increasingly being sold through a different mechanism — a sale under Section 363 of the United States Bankruptcy Code. A Section 363 sale allows a company, as a debtor-in-possession in bankruptcy, to sell […]
Zoning Laws Explained: What You Need to Know Before Buying Property
Before buying property, it is critical to determine whether local zoning laws may affect your plans. If you plan to redevelop the property, you will want to confirm that local zoning regulations permit development as intended. If acquiring property that is already developed, you must verify that the use is permitted in the underlying zoning […]
Special Needs Trusts in New Jersey: Planning for Your Loved One’s Future
For parents of a child with a disability, estate planning raises concerns that go well beyond deciding who will inherit their assets. Parents may spend years making sure their child has the right care, services, and support. Eventually, they must also confront a difficult question: Who will take over when they can no longer do […]
What Every Real Estate Investor Should Know Before Buying a Rental Property
Before buying a New Jersey rental property, an investor should verify realistic operating numbers, the property’s legal and regulatory status, lead-based paint and flood compliance, the existing leases and tenant protections, and the right ownership structure. A rental property is more than a piece of real estate; it is an operating business subject to legal, […]
Can You Change an Irrevocable Trust in New Jersey?
In New Jersey, an irrevocable trust can sometimes be modified even though its name suggests otherwise, and one of the primary tools for doing so is a process called decanting. Whether decanting is available depends on the specific terms of the trust and the discretion given to the trustee. Key takeaways: New Jersey has no […]
How Intellectual Property Valuation Will Impact Business Transactions
Intellectual property valuation determines the monetary value of a business’s IP assets, and it drives outcomes in licensing deals, joint ventures, mergers and acquisitions, financing, and ownership disputes. The most valuable assets of a business are often the things that cannot be seen or touched: a proprietary process, a copyrighted work, brand recognition, or the […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
