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How to Protect Your Trademark Internationally

How to Protect Your Trademark Internationally . / Credit: Trademark image via Shutterstock

Even if you think you've got your trademark protected, it may be vulnerable overseas. Before the Internet, that may not have mattered so much. Today, however, someone in another country using your trademark could be as damaging as someone opening store with the same name as yours in your own town.

Josh Braunstein, vice president and general manager of Corsearch, a company whose products enable trademark and brand professionals to effectively manage the trademark screening, search review and watching processes around the world, offers advice on how to protect your trademark overseas.

BusinessNewsDaily: Who needs to register their trademark overseas?

Josh Braunstein: First and foremost, a trademark (which can be a word, phrase, symbol or design) provides brand equity for a company. A company that feels its brand equity can be extended to other countries should consider filing a trademark to preserve and protect its rights to those brands. Because of the global nature of business today, especially with online commerce and social media, it is important for a brand to control its mark globally rather than allow somebody else to use it in another country. While brands are increasingly global, managing and protecting brands globally can be complex. Understanding trademark regulations in each country is important before considering registering or using a trademark outside the U.S.

For example, in the U.S, trademark rights are based on actual use. Using a trademark without registering it can actually give you rights to a name in the US, and allow you to defend the trademark if someone else tries to use it in the future. In fact, to actually register your trademark with the United States Patent and Trademark Office (USPTO), you must show actual use of that trademark (although you can file in advance in the actual use). If you are not actually using the name, the USPTO will not allow the mark to register. By comparison, trademark rights in many other countries are based on the filing. What that means is, if you are launching a brand in the U.S. and have plan to eventually extend overseas, you should consider filing  registrations in other countries before someone can leverage the brand equity you established in the U.S. and file for the same trademark abroad.

BND: How do you do that?

J. B.: Many brand holders register their marks in key countries around the world, or countries where they do business. The first step is to register your trademark in your home country and then register that trademark in other countries that are strategic to your business. This can be done through the country’s Patent and Trademark Office (PTO) or through an attorney or third-party facilitator.

There are ways to file for foreign trademarks that can save time and money for the applicant. Rather than applying for multiple trademarks in each country you want to have a registered mark, there are a couple of options you can select:

  • Apply for a Community Trademark (CTM) – This allows the applicant to register its trademark throughout the European Union in one application and by paying just one fee, rather than filing a separate application and paying a separate fee for each country. The caveat is that if your proposed mark isn’t clear for use in any of the countries of the European Union, the entire CTM application will be rejected.
  •  International registration – A broad international filing can be done through the Madrid Protocol, a group of 86 countries, including most of the major industrial nations in the world. Through this process, you can file a mark in your home country and then extend the filing later to other jurisdictions throughout the world. Although you still have to pay the fee in each country, this is still a smart and relatively inexpensive option, since you will save time and money from the administrative costs of having to fill out an application multiple times. This process is comparable to filing a common application for college instead of applying to dozens of colleges separately. It is important to remember that other countries can still choose to reject that mark.


BND: What are some of the steps companies can take to protect their trademarks overseas?

J.B.: Companies should run a clearance before applying for a trademark. This allows them to determine if another party is using an identical or confusingly similar trademark. Adopting an identical or similar trademark to others can lead to legal disputes and fees, brand confusion, and lost revenue. You can go to free PTO sites or service firms like Corsearch that offer the ability to search multiple jurisdictions at once with highly advanced query logic and intelligence.

When considering extending to a market outside of the U.S., it’s a good idea to run the trademark by local speakers to see if there is a negative meaning in the local language. You don’t want to have an embarrassing situation where your brand translates into a swear word or is pronounced similar to a word with negative connotations.

Then, it is important to clarify and prioritize what jurisdictions make the most sense for your brand. Identify key markets and secure trademarks in those jurisdictions first. This will provide a good benchmark to extend your brand internationally. It is often overwhelming (and unnecessary) to register your trademark in every country.

Brand holders should remember to protect trademarks online from cybersquatters, and other forms of online brand abuse. A company can register its domain name with key Country Top Level Domains (CTLDs), such as .uk (United Kingdom) and .fr (France) to help protect rights in other countries and can monitor domain filings around the world to prevent infringement.

BND: What are the most common mistakes when applying for a trademark?

J.B.: A common mistake that companies make is failing to ensure that they are the owner of a mark before applying in other countries. Before you extend your mark, you should make sure that you have a clearly established ownership.

Because filing rights are based on what the trademark is actually used for, you also should make sure to think through the current purpose of the brand name and what you may want to use it for in the future. For example, if you are filing for the name of a handbag and are planning to later apply the name to jewelry, you should plan for this in your brand strategy. Make sure that you think through what the future lines of commerce for those marks will be and then make sure you prove that you are using the mark in your application, which is a requirement in the U.S.

As mentioned earlier, translation in the market you’re using can be a potential pitfall. Your mark can translate into something you don’t want or there can be a bad cultural connotation, so make sure to check the translations thoroughly.

Another common mistake revolves around geography. In many countries you can’t be geographically misleading, because they protect geographic indications. If you’re a U.S. wine maker and you’re making a sparkling wine, you can’t export the wine to France and call it “Champagne.” Champagne has to be made in a specific region in France and the PTO there strictly enforces this. 

Finally, a trademark application has to be distinctive to your brand. The value is in the differentiation it creates in the marketplace, where a consumer looks at your mark and identifies it as a particular product or service. So you can’t register something generic or something that doesn’t distinguish it from others.

Through the entire process, it is advisable to hire a trademark attorney to help with trademark search, clearance and filing efforts.

BND: What else do companies need to know?

J.B.: Filing for international trademarks can be crucial to your business. There can be a potential loss of brand equity tied to these brand names. By applying for international trademarks, you can leverage these brands to help you expand, differentiate and communicate the quality and value of your band. If you allow others to register your brands in other countries, you dilute that and lessen the value of your brand, and further hurt your chances to expand globally.

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