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.
A Whistleblower Just Filed a Complaint Against Your Company: Here's What to Do Now
Few situations create more uncertainty than learning that an employee has filed a whistleblower complaint. Questions arise immediately: Is the allegation legitimate? Should the employee be placed on leave? Do we need to notify our insurance carrier? Are we now prevented from disciplining the employee if there are unrelated ongoing work related issues? There is […]
Assignment for the Benefit of Creditors: An Alternative to Bankruptcy for Distressed Businesses
When a business reaches the point where it can no longer service its debts or otherwise resolve its liabilities, management is often faced with a difficult question: is a bankruptcy filing necessary or is there another way to perform an orderly liquidation or sale of the business assets? While Chapters 7 and 11 of the […]
Breaking Down New Jersey’s “Mansion” Tax: What Buyers and Sellers Need to Know
For many years, the New Jersey Mansion Tax has been a significant consideration in high-value real estate transactions. Recent legislative changes, however, have substantially altered how the tax operates, including who is responsible for paying it and the amount owed in certain transactions. Whether you are purchasing, selling, or investing in New Jersey real estate, […]
Estate Planning for Digital Assets Under New Jersey Law
As our personal and financial lives increasingly move online, estate planning must evolve to address a new category of property: digital assets. From email accounts and social media profiles to cryptocurrency and cloud-stored business records, these assets often carry both financial and sentimental value. Yet, without proper planning, they can become inaccessible—or even lost—upon incapacity […]
The Role of Representation and Warranty Insurance in M&A Transactions
In today’s mergers and acquisitions market, representation and warranty (R&W) insurance has become a common feature of deal negotiations. Once used primarily in larger transactions, R&W insurance is now frequently incorporated into middle-market deals as buyers and sellers look for efficient ways to allocate risk and close deals. When structured properly, R&W insurance can help […]
You Just Received a Federal Grand Jury Subpoena in New Jersey: Now What?
Receiving a federal grand jury subpoena is not something most businesses or individuals anticipate. While it can be concerning, a federal grand jury subpoena does not necessarily mean that you are being accused of wrongdoing. It does, however, mean that a federal criminal investigation is underway and that federal prosecutors believe you may possess information […]
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!
