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International Trademark Protection options - what you should know

02 July 2014

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For Australian businesses, China is identified as the number one export target market, followed closely by the United States, the United Kingdom, New Zealand and Japan[1].

Entrepreneurs need to take steps to protect their trademarks in their future export markets? 

International trademark registration

Trademark registration is specific to a country.  A trademark registration in Australia will only give you trademark rights in Australia.  It won’t protect your trademark overseas.  It’s also important to note that a business or company name registration or domain name registration won’t confer trademark registration rights (in any country).

A recent telling tale is that of Penfolds wines in China and PINTEREST.  Pinterest recently suffered a blow to its global expansion plans when it lost its rights to use the trademark PINTEREST in Europe.  Pinterest failed to take the necessary steps to register its trademark in Europe even though it had already had significant use in the United States.  Interestingly, PINTEREST has also failed to secure its trademark rights in Australia and several other key markets.  While PINTEREST may be able to recoup its trademark rights, it will come at a cost and a much higher price than if PINTEREST had taken the necessary steps to secure international trademark registration from the get-go.

Your international trademark options

It’s important to know the different options available to protect your trademark overseas.

  1. You can file a separate national trademark application in each country where you intend to do business.  That is, you can file a China trademark application in China, a United States application in the United States and a New Zealand trademark application in New Zealand.
  2. You can file an International Trademark based on a corresponding Australian trademark application or registration and extend the International Trademark to your countries of interest.

Which option is best for you will depend on the countries in which you wish to protect your trademark.   An International Trademark can be an economical option if you need to file your trademark in several countries.  However, it isn’t available in all countries and is limited by the corresponding Australian trademark right.

Different laws in different countries

Each country has its own trademark laws.  While there are international treaties that standardize the trademark registration process, the registration or refusal of a trademark will depend on the individual laws and practices of each country and whether another company already uses or has registered the same or similar trademark.  So, a one-size-fits-all approach will not necessarily give you the best trademark protection.

For example:

  • the European Community has a strict practice in respect of descriptive trademarks.  A trademark that may be accepted in Australia, may be refused by the European Community Trademark Office on the grounds the trademark is descriptive.  As a result, it is sometimes better to file for a logo design that contains additional distinctive elements in Europe.
  • the United States requires a very specific description of goods/services.  A trademark that may be accepted in Australia, may be required to be amended in respect of the goods/services in the United States.

What trademark to protect

You need to consider what trademark to protect.  This is not necessarily as straight forward as it sounds.  GM Holden made a difficult decision to use the trademark NOVA on its compact car.  (In Spanish, the term “no va” means “it doesn’t go”).

A simple question often forgotten when filing your trademark in the United States is to consider whether to adopt United States spelling: such as, CENTER instead of CENTRE.

Another important consideration for international trademark protection is whether you also need to file the trademark in another language or non-English characters.  When filing in China and the UAE it makes sense to file in Chinese characters and Arabic characters, respectively.

Where to protect your trademark

When developing a new export market, it’s important to consider trademark protection as soon as possible.  The registration process in most countries is between 12-18 months (and in some countries much longer).  It’s important to plan ahead and consider not only the countries where you intend to do business in the future, but also where you manufacture or bottle your product.  I have previously written about the perils of failing to protect your trademark in China when you manufacture in China (see Why It's Important to Protect Your Trade Mark in China).

It’s also important to consider the trade practices of the countries where you do business.  For example, if you sell to the United Kingdom, you may need broader protection in the European Community because of the free trade agreement between member countries of the European Union.

Online business

What if your business is online?  Your business may potentially reach out to consumers worldwide.  While it may not be feasible to register your trademark worldwide, you should register your trademark in countries where:

  • you “reach” out to consumers.  Do you offer shipping to Japan? Then you should protect your trademark in Japan. 
  • your customer base is.  Do a percentage of your sales come from New Zealand customers?  Then you should protect your trademark in the New Zealand. 
  • you have a connection.  You may not necessarily have a lot of business in the United States, but if there is any connection to the U.S. you may need to take steps to protect your trademark in the U.S. given its litigious nature.

Your international trademark checklist:

▢         Where are you currently doing business?

▢         What are your future export markets in the next 1-3 years?

▢         Where do you manufacture?

▢         Have you protected your trademark in the local language?

▢         Do you offer goods or services for sale online?  If so, identify the countries where you have a connection.

This article is intended to outline some of the trademark issues that you may need to address with your legal counsel when protecting your trademark overseas.  It does not go into great depth with the subject matter, but offers useful insights into the basics.  It is not legal advice and it is not exhaustive of all laws and issues that may apply to your particular business.  Qualified legal counsel should review the details of your international trademark protection.

© 2014 Natasha Burns Principal Lawyer | Burns IP & Commercial

[1] Australian International Business Survey (AIBS), 2014 by Roger Donnelly and Mark Thirlwell in partnership with the Export Council of Australia (ECA), Austrade, Export Finance and Insurance Corporation (EFIC), University of Sydney and NV Design.


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