trademarks Archives

Every business has its trademark or unique symbol. If you are operating within the United States, you certainly have a US trademark to secure your business from any trouble. It exclusively belongs to you. A trademark distinguishes different products; it builds goodwill, which continues even after your death.

But what if you want to expand internationally? How will you protect the trademark if you plan to sell your goods in Asian or European countries? In such cases, you have to opt for international protection. This article will guide you thoroughly regarding the ways to protect your trademark internationally.

1. Selecting a Strong Symbol Is the Key

What is the very first thing that the customer sees when buying a product? Of course, the trademark! Thus, it should be both strong and unique to avoid infringement.

-Take your time to choose it. According to the USPTO or the United States Patent and Trademark Office, the trademark should give just a hint to your service; it should not be explanatory or generic. For example, you cannot understand their business from names like Nike or Starbucks, can you?

-How do international countries translate your trademarks? Whether they will do it phonetically or accurately? Keeping these pointers in mind is crucial if you have plans to have international customers too.

-You might have heard about Gerber, the repute baby food maker. But do you know that Gerber is used as slang in France? Thus, before fixing the trademark, check out whether it means something insulting in the international countries.

2. Going to USPTO for Registering the Trademark

To protect the trademark internationally, you first need to register it overseas, and registering it with the USPTO is vital. US registration is quite hassle-free, and after it is done, you can register the same trademark in any other country within 180 days from the date of US registration.

Next comes the extensive searching for the trademark to ensure that it does not have any similarity with any other brands in the world. You can opt for a DIY search to cut down the cost, but to be sure, give this responsibility to the trademark attorney for a better trademark office action. It is wise to avoid confusion or infringement by spending some extra bucks.

Which international classes should your trademark application contain? Which filing methods international countries follow? The trademark attorney will guide you in these aspects too. So, before registering the trademark, do not forget to have a thorough discussion with your attorney.

3. Finding out the International Markets Requiring Trademark Protection

Opting for international trademark protection might feel daunting in the beginning. Thus, if you have collaboration with any international distributor, first register your trademark there. Do you carry out your business online? If yes, then locate the place where the majority of your customers belong?

Also, determine your target market and the future of your business there. After that only, apply for trademark registration there. For instance,If you sell winter gears for adults, you should first register it in Canada instead of the Caribbean.

Using a defensive trademark protection strategy is sometimes very effective by which you need to file your registration in India or China, the first-to-file countries. So, first, prepare a list of the countries where you are planning to expand your business with the help of your trademark attorney. Next, it gets an idea about the cost of trademark protection in those countries. Now go for the ones that do not need you to burn a hole in the pocket.

4. Registering the Trademark Internationally

If you have already registered with the USPTO, do not waste time; apply for international registration immediately. It will give you an edge over others, especially the bad faith registrants. You can have some options for international registration.

-You have to abide by the Madrid protocol having 122 countries as its members. Following this treaty, you can send a single application to any of these countries in your mother tongue. This way, the filing method becomes easier. However, it has no guarantee of approval as it totally depends on each country.

-To apply in a particular country, you might need the help of the list of international trademark offices provided by WIPO or World Intellectual Property Organization. Though this process is time-consuming, the chance of approval is more as you can give accurate information as needed by the specific country.

-Are you planning to secure your trademark in those particular countries? Then this process is the best for you as the Madrid Protocol is an extensive process and often does not include the particular details.

-Opting for registering transliterations or registering the name in their language is very effective in this respect. Use the WIPO fee calculator to get an idea about the registering costs.

5. Your Trademark Is Ready? Now Keep an Eye on Its Use

Regulating and monitoring your trademark on a regular interval is imperative, and you should do it both in your own country and in international countries. After successful registration, the ® symbol should be used without fail. Whether you are showing your trademark on your products, or the banners or on your website, that symbol should be omnipresent. This way, everyone will know that your trademark is legal and secure, and you don’t have to face any dispute.

But to be on the safe side, always monitor both offline and online selling your products, and have a thorough idea about the trademark protection rights of international countries. International trademark protection is the need of the hour for every flourishing business as forging trademarks is now all over the world. So, despite following all the legal procedures, you need to be on your toes all the time.

Final Thoughts

In a nutshell, follow the five ways stated above, hire a reputed trademark attorney, know all the ins and outs of trademark registration and be alert and attentive. Then no one can stop your business from reaching the sky!

Washington, DC – It’s no longer just the US and the European Union that are concerned with the festering issue of counterfeit products, say Michael Czinkota and Ilkka Ronkainen of Georgetown University.

“Globally, companies reportedly lose a total of $657 billion every year because of product counterfeiting and other infringement on intellectual property,” they say. “Today’s key problems are with high-visibility and strong brand name consumer goods.”

Intellectual property enforcement “ensures that new ideas can blossom into economic opportunity,” they’ve written in a recently published paper addressing the topic of counterfeit goods.

“Intellectual Property Rights (IPRs) have become a core issue in the global economic debate. No longer confined to cheap knockoffs of luxury goods, IP theft is placing industry and the public at risk of highly adverse economic, safety, and health consequences,” they added.

Earlier, the only concern was whether a company’s product was being counterfeited; now, the raw materials and components purchased for production may be counterfeited. In general, countries with lower per capita incomes, higher levels of corruption in government, and lower levels of involvement in international trade tend to have more intellectual property violations.

Ronkainen teaches marketing and international business at Georgetown University, while Czinkota researches international business and policy issues at the school.

According to the writers, China, long seen as the focal production point of global counterfeiting operations, has taken significant steps to counter what has plagued the country’s e-commerce market particularly hard.

Alibaba “spends more than $16 million yearly fighting counterfeit goods,” they say. Another example is “Hong Kong’s commitment to the protection” of intellectual property.

“With the goal of enhancing consumer confidence in Hong Kong, and to strengthen the city’s reputation as a ‘Shopping Paradise’ for genuine products, the Intellectual Property Department has launched the ‘No Fakes Pledge’ scheme,” Czinkota and Ronkainen said.

The issuing bodies of the scheme are the Hong Kong & Kowloon Electrical Appliances Merchants’ Association Limited and the Hong Kong Coalition for Intellectual Property Rights of the Federation of Hong Kong Industries.

“The international marketer must act to enforce intellectual property rights. No industry or country is immune from infringement, nor can they address the threat alone. There is also need for better education regarding the risks IPR violations pose and how to defend against them,” they said.

For example, the pharmaceutical industry lobbied to make sure that provisions for patent protection in the NAFTA agreement were meticulously spelled out.

Pharmaceutical Research and Manufacturers (PhRMA) addressed the issue of international IP protection by responding to the Special 301 Report issued by the US Trade Representative in May 2012.

The PhRMA statement cited the need for IP protections in spurring innovation, research and development, as well as the need for fair international market conditions to ensure that patients have access to medications.

One research firm estimated the global market for counterfeit pharmaceuticals to generate revenues between $75 billion and $200 billion a year.

The Pharmaceutical Security Institute (PSI), a trade association created to address illegal pharmaceutical incidents, collects data on the number of counterfeiting, illegal diversion, and theft incidents. These incidents increased seventy-eight percent from 2005 to 2009.

Pfizer reports that between 2004 and 2010 it seized more than 62 million doses of counterfeit medicines worldwide. More than 200 million counterfeit Eli Lilly medicines have been seized in 800 raids around the world.

“A number of other governments are drafting similar policies, which have served as a catalyst for enhancing protection in both the public and private sectors in those nations,” said Czinkota and Ronkainen.

Efforts to protect intellectual property, and modernize the patent and trademark system are crucial, they added.

“The power of creativity and innovation applied to the solving of practical problems is not the exclusive province of any country or people. A victory over fakes and counterfeits will protect the quality and reliability of products and services, and lets customers be more informed and secure in their usage decisions.”

10/21/2014

5 Ways to Protect Your Trademark Internationally