One of the most rewarding – and enjoyable – aspects of my work is helping companies build and manage their international trademark portfolios. Rewarding because it is usually one of the keys – perhaps the key – to unlocking promising markets overseas. Enjoyable because it allows me to work with lawyers and service providers in jurisdictions around the world, learning about various legal systems and using my foreign language skills. At the same time, the work can definitely be challenging, and at times frustrating, for reasons I will describe.
Often, the international trademark portfolio is built on a national one, comprising trademarks in the company’s home country. However, building an international trademark portfolio almost invariably requires more than just replicating the home country trademark portfolio in other jurisdictions. For example, when I was working in China, I managed the local trademark portfolio for a well-known UK brand. This China portfolio was much larger than the company’s UK portfolio. For a start, back then there were no multi-class applications in China, so a single UK registration could translate into a dozen Chinese ones.
Meanwhile, the almost complete lack of protection for unregistered trademarks in China changed the calculus when it came to minor marks, such as old logos and advertising slogans. For obvious reasons, logos and slogans not currently used are less attractive to counterfeiters, considerably reducing the likelihood fakes will be made, and enforcement required as a consequence. If an infringement takes place in the UK, my client could rely on common law rights to protect their trademarks. However, in China, an actual registration is normally required to protect the trademark. The cost-benefit analysis worked in favor of registering these minor marks in China, but not in the UK (or the US for that matter).
A similar situation occurred with Chinese-language marks. Only a minute percentage of UK residents would recognize the client’s name in Chinese, while in China it is likely at least 50 million people would. For some companies, it is trademark protection that drives their branding for a foreign market. Even if a company would rather stick to its original name in Latin characters, market considerations may make it prudent to come up with a name in Chinese (or Thai, or Marathi).
Once the universe of trademarks to be registered is defined, the next step is to proceed with the registrations. During this stage, the line between stimulation and aggravation was very thin. Think of one of those carnival horse race games, with each horse representing a trademark application. Some of the horses can get ahead very quickly, only to then stall. Others may enjoy a sudden burst that takes them across the finish line, but perhaps not the ones that are a priority.
In fact, to make it accurate, the game would need lanes perpendicular and at an angle to the main ones, especially if you are looking at registrations across different jurisdictions. Companies may need to juggle office actions, oppositions, bad-faith registrants, and plain randomness all at once. Though Madrid System trademark filings often can facilitate the process, it is not an option in some countries, and even in countries where it is technically an option, as a practical matter a national filing might be more prudent. Even with Madrid filings, it can still look like a carnival race, with trademark offices in different Madrid countries classifying goods differently and encountering different issues. See Register Your China Trademarks in China not Madrid.
Unfortunately, some horses may never cross the finish line. In other instances, and as unsavory an option as it is to some companies, reaching terms with a trademark squatter may be the only available option for a company to own “its” mark – and sometimes it is a sensible option in the grander scheme of things.
Some companies assume no “management” is required after registration. However, there is plenty of work to be done. For one, use requirements vary from country to country. As companies allocate limited resources, legal counsel on these requirements is critical. For example, the need to use a trademark in Country A may tip the scales when deciding on whether to open the next store there or in Country B.
In addition, companies must actively protect their trademarks. While working in Hong Kong, I would regularly visit the street markets where counterfeits were sold. It was interesting to see how blatantly some brands’ fakes were on display, while others were hard to spot. As it happens, some brands think that registering their trademarks is the end of the story, when in fact it is only the beginning. Most law enforcement agencies are wary of undertaking action against counterfeiters without firm assurances the brand owning company will help them obtain a conviction. In other countries, information must essentially be spoon-fed to law enforcement before any action is taken. All this requires work on the part of companies.
Another part of international trademark portfolio management involves trademarking licensing. Business considerations are usually at the heart of trademark licensing, but differing legal requirements must be taken into consideration when negotiating licensing deals. In addition, licensing requires ongoing monitoring throughout the duration of the deal, to ensure compliance with both relevant trademark laws and contractual provisions.
Finally, portfolios must be audited on a regular basis, to identify gaps and compliance with all legal requirements. Items to check include coverage of all relevant classes, expiration dates, compliance with use requirements, and inclusion of new terms used to describe the brand in local markets.
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