Hodgson Legal

Trademark Registration Goes Global

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International trademark registration has become vitally important for online brands. And these days, what brand doesn’t exist online? Brand owners selling in the global market are well-served to understand the basics of international trademark registration, lest their brand disappear.

A rampant increase in the sale of online counterfeit goods on Amazon is but one example of how the a brand’s very existence can be threatened. International trademark registration can be vital to survival. It doesn’t solve the problem, but it’s an essential part of the solution.

“In Amazon’s quest to be the low-cost provider of everything on the planet, the website has morphed into the world’s largest flea market — a chaotic, somewhat lawless, bazaar with unlimited inventory.”— CNBC

Once upon a time, a US trademark registration afforded a new brand owner the opportunity to open a bricks and mortar store in one location, and have years to expand into other states. Those days are long gone.

Bricks and mortar stores have become “Bricks and Clicks.” Global distribution is now common place for brands with no physical locations. Many brands exist by clicks alone through online stores at sites like AMAZON. Amazon itself was originally a clicks only brand. Now, Amazon also serves as a distribution center for thousands of other online clicks only “store” brands around the world.

International trademark registration is not just about counterfeit goods. There are now hundreds of new generic top level domains (gTLD’s) coming on board. Country specific domain endings combined are another source of trademark infringement. When your own trademark finds its way into a domain name in a foreign country, or one of the new generic top level domains it can be a problem to shut down without that local registration. So just how do clients protect themselves?

Two examples of international trademark registration

Let’s review the real life stories of two clients. The first, I’ll call Eric. Eric, a successful Hollywood composer, launched a software company called MUSIC SOUNDS. The company developed libraries of sounds music professionals include in their own original sound recordings. Eric launched MUSIC SOUNDS using Facebook, giving away thousands of free samples of sounds from the library. This drove traffic to the company website where the full library of sounds could be purchased. While US sales were beyond expectations, purchases of MUSIC SOUNDS by buyers outside the US exceeded six figures within the first year.  MUSIC SOUNDS needed protection in Europe almost immediately.

Then there’s our clothing brand client, FASHION THREADS, launched by two young women who had already built and sold one successful brand. This time around, they understood in advance the risks of foreign knock offs. While they launched in the US, it would be several seasons before International distributors were in place. They wisely sought my help with International trademark registration in key markets, before their US brand name could be poached and registered by copycats in key foreign markets.

How to secure international trademark registration?

First, we set out to obtain a strong US trademark registration. Next, we developed a strategy and budget for conquering the global marketplace. Finally, we used two different trademark treaties to to secure international trademark registrations in key territories.

“No matter how one chooses to register, just begin the process. There are benefits to and pitfalls to either method.”
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International trademark treaties guarantee protection to a foreign national on the same basis as any citizen of a particular country. For example, a US trademark owner that files for a trademark in France obtains the same trademark protection in France as a French company would obtain for its own trademarks. Foreign brands can also obtain a US trademark registration.

Why do international trademark registration treaties matter?

There are two key international trademark registration treaties. The first allows a US trademark owner to file an application directly into another country.  Owners rely upon their US application or registration as a basis for the filing. The second allows filing into the US directly from the US Trademark Office under a more recent treaty known as the Madrid Protocol.

Paris Convention. The Paris Convention dates back to 1883. In 1967 the United Nations created the World Intellectual Property Organization (WIPO) which administers this treaty. WIPO, based in Geneva, Switzerland is one of the least well-known, yet most important operating divisions of the United Nations.

For direct filings in a foreign country, we maintain a carefully selected network of expert foreign trademark law firms around the world who oversee and monitor our clients’ trademarks in each country.

Madrid System. The second treaty is often referred to as the Madrid Protocol.  The Madrid Protocol allows US trademark owners to file for an International Registration through the U.S. Trademark Office. One must “designate” the countries in which you wish to obtain an international trademark registration. The foreign application are based solely upon the existence of the home country pending application or registration. The U.S. Trademark Office forwards the application for each country to WIPO, which then forwards the application to the local office in the designated country. The home office of each country then decides whether the mark qualifies for registration.

Which is the best way to secure an international trademark registration?

The answer of course is, “It depends.”

First, there are still countries which have not yet joined the Madrid Protocol. This means there is no choice but to file directly in each country using local counsel. For example, Canada and Mexico are notable countries not yet part of Madrid. Both are scheduled to join within the next two years.

No matter what means of filing one chooses, it’s important to begin the process. There are benefits to both ways of filing, as well as some important pitfalls. Later in our series, we will examine the advantages and pitfalls of both direct filings, as well as relying upon Madrid.

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