On this page
- Taking Your Brand Global
- International Trade Mark Filing Strategies
- Prioritising Your Brand Protection
- Priority Filings
- First-to-Use vs First-to-File Markets
- Key Risk Markets
- Non-English-Speaking Markets and OEM Manufacturing
- Case Studies: Consequences of Not Getting It Right
- Enforcement Strategies
- Trade Mark Maintenance
- Correct Use of TM and ® Symbols
- Key Takeaways
- Closing and Q&A (Edited)
Rebecca Jones (Practice Group Leader, Trade Marks & Intellectual Property, LegalVision)
Welcome everyone to our webinar on global expansion and global protection: protecting your brand across borders.
My name is Rebecca Jones and I am the Practice Group Leader in LegalVision’s Trade Marks and Intellectual Property team.
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So today we will be discussing taking your brand global. We will look at some different international trade mark filing strategies. We will discuss some practical tips for prioritising your brand protection expenditure. We will look at some case studies of the consequences of not getting it right. We will look at a few different types of enforcement strategies, some essentials that you need to know about trade mark maintenance, and then we will summarise with some key takeaways before we move on to Q&A at the end.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Taking Your Brand Global
When expanding your business internationally, brand protection should be at the forefront of your strategic planning.
Many businesses make the costly mistake of underestimating the importance of international trade mark protection, leaving it too late or assuming that because their trade mark is registered in Australia they will easily be able to register it overseas as well.
International expansion is a really exciting and lucrative avenue for many Australian brands, and realising too late that your valuable brand is not adequately protected, or worse is lost entirely in one of your key markets, can be a huge blow.
So first things first: trade mark protection functions on a country-by-country basis. If you have registered your trade mark in Australia, that is a great first step, but it will only provide you with protection within Australian borders.
Each country has its own trade mark registry and office, its own application and maintenance procedures, and different legal requirements.
A trade mark that is available for use and registration in one country may encounter issues in another country due to different examination standards or prior existing brands in different markets.
At the outset, it is important to identify your key international markets. This will ensure you have clear priorities in terms of where to focus your efforts and expenditure when it comes to brand protection and enforcement.
Once you have identified the key markets for your brand, you can then ensure that you equip yourself with the knowledge of the various mechanisms and procedures that are going to help you ensure robust protection in those regions.
Remember, being familiar with the quirks and nuances of trade mark protection and enforcement in your target markets is not just helpful, it is essential. It can mean the difference between a successful expansion to a particular territory compared with a major legal fight and potential loss of brand rights.
International Trade Mark Filing Strategies
There are two primary filing strategies when it comes to international trade mark protection.
The first is direct national applications. This involves filing separate standalone trade mark applications with the trade marks offices in each of the countries of interest to you. Using this route, you end up with a portfolio of individual trade mark rights that stand alone and are not linked to one another. You need to appoint a local agent to represent you and file the applications on your behalf in each of the countries.
When any updates or maintenance needs to happen to your trade mark rights, for example 10-year renewals, recording a change of owner name, or a transfer of rights, these updates must be carried out individually for each trade mark right via the local agent appointed in each country.
The second filing strategy is via the Madrid Protocol framework. The Madrid Protocol is an international treaty that allows you to file a single international application designating multiple member countries, and there are currently over 130 countries that are members.
This application is based on an existing home application or registration in your home country. So generally for an Australian business that would be your Australian application.
Using the Madrid Protocol, you file one international application through your home IP office. In this case, it would be IP Australia. You list the countries that you want to be covered under your protection.
The World Intellectual Property Organization, also called WIPO, then examines the application for formalities and passes details of the application to each of the trade marks offices in the relevant countries that you have designated. Those countries then examine the application in accordance with their own local requirements.
To obtain protection via the Madrid Protocol, the countries must be members of the Madrid Protocol. Many countries are these days and more are joining every year. Some notable exceptions that are not yet members include Hong Kong, Taiwan, and South Africa. In those countries it is still necessary to file via the direct national route.
To clear up a common misconception about the Madrid Protocol, a lot of people think that this is an international registration that automatically protects your brand worldwide. This is not quite true.
While it does streamline things and allows you to expand into multiple countries at the same time, you still need to designate each of the countries of interest to you. It does not automatically apply worldwide, and you need to pay the associated official fees for each country, which can vary on a country-by-country basis.
It does, however, streamline the entire process and can provide significant cost savings because you do not need to appoint a local agent in each of the countries of interest to you. Maintenance, such as changes of owner name, assignments, and renewals, can all be carried out via the international registration in a single filing with WIPO, which then flows through to each of the designated countries to update their own records independently.
You can add further designated countries to your international application by way of subsequent designations at any time as you expand your activities into new markets.
Continue reading this article below the formPrioritising Your Brand Protection
Now, let us look at prioritising your brand protection. In an ideal world, we would always recommend protecting your trade mark in all countries where your goods or services are in the market or where you intend for them to be in the next few years.
Obviously, in this day and age with international shipping and e-commerce, your goods may be available to consumers worldwide. However, the cost of protecting your trade mark in every single country where your online store can be accessed from or your goods can be shipped to may be cost-prohibitive.
In that case, I want to give you some practical tips for prioritising your brand protection expenditure.
I like to think of trade mark protection as functioning as both a sword and a shield in defending your brand.
The shield aspect protects your business when you are using the brand. For example, say you are an Australian business and you sell to consumers in the US. If you have your trade mark registered in the US, this protects your use from challenge by third parties.
On the other hand, if you do not register your trade mark in the US but you still ship there, there may be a confusingly similar brand already owned by another trader in the US. In this case, you might be liable for infringing that third party’s trade mark, which can be a costly mistake.
The sword function, on the other hand, enables you to take action against a third party that makes unauthorised use of your brand. What this means is that if you have your trade mark registered in the US and a third party uses the same or a confusingly similar brand without your authorisation, you can challenge that use on the basis that it constitutes an infringement of your registered trade mark rights.
The sword and shield function can also be a good way to think about which markets are priorities when it comes to brand protection. It will usually be tied to those countries where you have the higher sales figures, because the more sales you make in a particular market, the higher the damages you may be liable for if you inadvertently infringe another trader’s trade mark. So the shield function is important in those markets.
Similarly, the more sales you make in a particular market, the more valuable your reputation in that market is and the higher the likelihood of encountering copycats or other activities that threaten to damage your brand. To enable you to enforce your rights effectively, you need the sword function of trade mark registration.
In this way, you can weigh the costs of protection, which vary by country, against the benefits, which include access to key markets without risk of infringing third-party rights and the ability to enforce your rights against others.
Priority Filings
Another key mechanism of global trade mark protection is priority filings. Under the Paris Convention, if you file a trade mark application, say in your home country of Australia first, you can file internationally within six months and claim priority from the earlier Australian filing date in the overseas application.
As trade mark applications are examined in order of priority date, being able to backdate your application by six months can make a really big difference in securing your brand in key markets before other traders do. This can be a really useful way to stagger the costs associated with trade mark filings over six months while still retaining your earlier priority date.
First-to-Use vs First-to-File Markets
Another key consideration when prioritising your protection can be whether the particular market of interest recognises or gives precedence to the first to use or the first to file a trade mark.
As an example, in Australia we recognise the owner of a trade mark as the first to use it in commerce, even if the trade mark is unregistered. This provides unregistered trade mark owners with some recognised rights, often referred to as common law trade mark rights. Other countries that follow similar first-to-use principles of trade mark ownership include Canada, Hong Kong, India, Malaysia, New Zealand, Singapore, and the United States.
Some other countries follow a first-to-file principle of trade mark ownership. This means that even if a business has been using a trade mark in the marketplace, if they do not register it and another trader does, the registered owner can be the one with stronger rights in the trade mark. First-to-file countries include China, Japan, the European Union, and the United Kingdom.
So how is this information relevant for assessing your brand protection priorities?
It can be wise to secure a filing date in first-to-file countries as soon as possible. Even if you have been trading in a particular country already without issue, your prior use rights may not be as strong if someone else applies to register your brand before you do in that market.
Key Risk Markets
I also want to talk a little bit about key risk markets. Thinking practically, you should identify which markets carry the most risk from a brand protection perspective for your business and prioritise protection there.
The risk can be different for each country. For example, the size of the US market is often a big factor, which makes this a key expansion market for Australian brands. If you find yourself unable to enter the US market under your chosen brand due to a lack of protection and risk of infringing a third-party mark, this can present a big risk and setback to your global expansion strategy.
Another market that should also be considered a priority is China. This is another huge market. China follows a first-to-file system and trade mark filings are easily accessible, with low official fees and no need for legal representation to file.
As a result of this accessibility, China has inadvertently become a hotspot for trade mark squatters. These squatters monitor international filings for successful businesses and register the corresponding brand in China. By the time a successful Australian brand thinks about entering the Chinese market, they realise they cannot do this without buying back the rights from that trade mark squatter or rebranding entirely for the Chinese market.
Non-English-Speaking Markets and OEM Manufacturing
In non-English-speaking countries, think about protecting translations as well as transliterations of your brand. One version will not necessarily protect the other. Registering the different variations of your brand that are used and recognised by consumers in those markets is crucial.
We often say that you should ideally protect your trade mark in all markets where you will be selling your goods or offering your services. But what about original equipment manufacturer (OEM) arrangements where goods are manufactured in a particular country solely for export, with no intention to be sold there? Does the trade mark need to be protected there?
There is not really a one-size-fits-all approach to this question. Some courts in some countries have previously recognised OEM arrangements as an exception to trade mark infringement if the goods never enter the market where the manufacture takes place.
However, this position has shifted in some jurisdictions, including China. Courts have held that unauthorised use of a mark registered in China can constitute infringement regardless of destination. This means that if you do not have your trade mark registered in China, your genuine goods may be prevented from leaving the country even if they are intended for overseas markets.
So best practice is to register your brand in any territories where your goods are being manufactured as well, even if it is solely for export.
Case Studies: Consequences of Not Getting It Right
I just want to touch on a few case studies and examples of the consequences of not getting it right. Many of these relate to situations in China involving trade mark hijacking.
For example, in 2012 Apple had issues in China when a Chinese company, Proview Technology, claimed that it owned the iPad trade mark in China because it had applied to register it there before Apple did. In the end, Apple was forced to pay a US$60 million settlement to secure the rights to the brand.
Tesla also had issues in China around 2013–2014, when a businessman registered the Tesla trade mark and logo. This led to a long dispute. Tesla eventually regained control of its branding in China, but only after extensive and costly litigation.
In 2020, the Japanese retailer Muji lost a legal battle to a Chinese company that had registered the Muji trade mark in Chinese characters. This forced the legitimate brand to pay damages and rename products. This case highlights the importance of securing translations and transliterations of your brand, even if you have registered the English version.
Lastly, the Penfolds case is a well-known example involving an Australian wine brand. An individual registered the “Ben Fu” trade mark in 2009, which is a recognised Chinese translation of Penfolds. This forced Treasury Wine Estates into a decade-long legal battle. They finally regained control of the core Chinese trade mark in 2020 after proving bad faith, but it cost years of expensive litigation.
Enforcement Strategies
We have talked about how important trade mark registration is to enforce your brand by taking action for trade mark infringement. I also want to touch on a few ancillary and complementary strategies and mechanisms for protecting and enforcing your brand rights.
The first is customs notices, sometimes referred to as border protection notices or notices of objection. These are lodged with the border force or customs department in particular countries and enable them to intercept counterfeit or infringing goods at the border on behalf of the true trade mark owner. Availability and requirements vary by country, but they are particularly accessible and effective in Australia, New Zealand, and the United States.
The second enforcement strategy is platform takedowns. Most online, social, or e-commerce platforms have robust IP infringement policies enabling trade mark owners to take swift action to remove infringing listings. Takedowns can be more straightforward and quick when the brand is pre-registered with the platform, such as via Amazon’s Brand Registry programme.
Periodic trade mark watching searches are also a great way to identify infringement or counterfeit products quickly. Keep an eye on local marketplace platforms and trade marks being filed in the countries of interest to you to gain intelligence into competitor activities and ensure you are aware of issues as soon as they arise.
You can also utilise copyright registration where available. In Australia, copyright protection is automatic and there is no formal registration system. Some countries, such as China and the US, allow or require copyright to be registered before it can be enforced. This can provide an additional layer of protection to visual trade marks such as logos and other copyright works like packaging or artwork.
Trade Mark Maintenance
Trade mark registrations are generally subject to a use requirement. Usually around three to five years from the registration date, depending on the country, the trade mark may be vulnerable to removal if it is not being used in that country on the goods and services covered by the registration.
Most countries, Australia included, take a reactive approach. Even if a trade mark has not been used, the registration remains live as long as it is renewed unless a third party actively challenges it.
Some countries, such as the Philippines and the US, take a proactive approach. The owner must demonstrate use at certain milestones after registration by filing declarations of use. Failure to meet these requirements can result in removal of the trade mark from the register.
If you have a trade mark registered in a country but have not yet used it there, or not for the full range of goods and services covered, you should bear these use requirements in mind. In some cases, it can be worthwhile strategically refiling the application to restart the clock on the use requirement if you still intend to use the mark in future.
Correct Use of TM and ® Symbols
When trading internationally, ensure correct use of the ™ versus ® symbol alongside your brand.
The ™ symbol can generally be used as soon as you like, whether you have filed an application or not. It puts third parties on notice that you claim rights in the brand.
The ® symbol is reserved only for registered trade marks. It signals that you have registered rights. It is an offence to use the ® symbol incorrectly against an unregistered trade mark.
Because trade mark rights function on a country-by-country basis, you must apply the correct symbol for goods produced for different markets. In some countries, such as the US, use of ® acts as statutory notice and may be necessary to recover damages in infringement proceedings.
Key Takeaways
Be proactive rather than reactive about your global brand protection. It is often much more straightforward and cost-effective to be on the front foot.
Set your brand up for success with a strong protection strategy from the outset.
Be clear on your priorities for international markets. Familiarise yourself with key risks in those markets and prioritise protection accordingly.
Closing and Q&A (Edited)
That concludes the main part of our webinar. You might find our publication useful. You can download our guide on trade mark essentials in the resources tab or by scanning the QR code.
You might also be interested in our upcoming event: Stop Brand Copycats: Trade Mark Protection for the Fashion Industry, on Thursday 12 March at 11:00 am. You can register via our website.
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