The below article from 14 January 2015 has been provided by Anita Brown, Phillips Ormonde Fitzpatrick. Article also available online, click here.
In October 2014, the Australian Government released its Industry Innovation and Competitiveness Agenda Report. A key part of its reforms include the development of five Industry Growth Centres, which are designed to improve competitiveness and productivity and grow exports in:
- food and agribusiness
- mining equipment, technology and services
- medical technologies and pharmaceuticals
- advanced manufacturing, and
- oil, gas and energy resources.
Among the many legal issues both small and large exporters face is the protection of their brand or trade mark abroad. Our Q&A provides an introduction to overseas brand protection.
Why should I protect my trade mark overseas?
An Australian trade mark registration does not give the trade mark owner any rights outside of Australia. Exporters and potential exporters of goods and services risk another party copying their trade mark, registering their trade mark or having to do battle with counterfeiters if they do not seek appropriate trade mark protection in their key markets. Ultimately, exporters could lose sales or become involved in costly legal disputes if trade mark protection has not been sought abroad.
How do I protect my trade mark overseas?
Trade mark registration is generally specific to a country. It is not possible to protect a brand in every country in the world through a single trade mark application. For some jurisdictions, a trade mark applicant can file an application via the Madrid Protocol (‘MP’) to obtain an international registration. Trade mark protection under an international registration is available in more than 90 countries contracted to the MP. A full list of countries contracted to the Madrid Protocol is available on www.wipo.int
After the filing of the initial application for international registration, a trade mark applicant can designate additional countries where they wish to seek protection at any time. This strategy may be particularly useful for exporters who can designate new countries as their market expands.
The application for international registration undergoes a formalities examination at the International Bureau in Geneva, and then undergoes examination based on the law of each country designated. Designated countries are required to review the international registration within either 12 or 18 months from the filing date of the application for international registration. When your international registration is granted in your designated country, your trade mark will have the same protection as a national registration in that country.
The MP system makes it possible to record subsequent changes or to renew the registration centrally in a single step and using a single currency. Thus, it can be cheaper and easier to administer a single MP registration than to file registrations in separate countries. However, the application for international registration must be based on a home country application or registration (e.g. an Australian application or registration). The disadvantage of this option is that it remains dependant on the home country application or registration for the first five years, so that if the home country application or registration lapses or is cancelled for any reason, the international registration is also cancelled. There are however, mechanisms to retain protection in individual countries should this occur.
Some countries are not part of the MP, so it is necessary to file a national application in that country of interest. There may also be other considerations for choosing to file a national application, even if that country of interest is part of the MP.
There are some regional systems where it is possible to file an application to protect a number of countries. For example, a European Community Trade Mark application is a single application that covers the majority of the European Union member countries. This may be filed either as a national application or via the MP.
What is a first to file country?
Many countries follow a first to file trade mark system. This means that the person who filed a trade mark application and obtains registration will have priority, even if another party can show prior use of the trade mark. In these countries, use of the mark without a registration is not required in order to obtain to registration of the mark. Use of the mark without a registration will generally not provide priority trade mark rights, although in some countries there are exceptions for famous marks. In first to file countries, it is important to file your trade mark application as early as possible to minimise the likelihood an unscrupulous party will obtain rights to your mark.
What is a first to use country?
Some countries such as the United States, the United Kingdom and Australia follow a common law system whereby the first person to use a trade mark will have priority over a person who files a trade mark application at a later date. In these countries, it is important to consider undertaking trade mark clearance searches for both registered and unregistered trade marks.
What is trade mark squatting?
Trade mark squatting occurs when a party intentionally files a trade mark application for another party’s registered trade mark in a country where the other party does not hold a trade mark registration. These are also referred to as bad faith filings. The squatter takes advantage of a particular country’s first to file trade mark system to secure a registration, usually with the aim of requiring the true trade mark owner to purchase the registration.
In some cases, the trade mark squatter may be the squatter’s manufacturer, distributor or retailer the exporter deals with. Sometimes, the squatter may have become aware of the exporter’s plan to expand into another country after seeing the product at a trade show. Apple is among a string of large companies who have been tied up in lengthy legal battles or paid significant sums to trade mark squatters to secure their trade mark rights.
Which countries should I protect my trade mark in?
In addition to protecting your trade mark in countries where you sell, or plan to sell, your products or services, consideration should also be given to protecting your mark in countries where you manufacture or develop your products, particularly if it is a first-to-file country.
Why is it important to obtain a trade mark clearance?
A trade mark clearance search will determine if there are any prior conflicting trade marks and whether use of a mark carries a risk of infringement. A search can also help to determine whether a mark is likely to be considered sufficiently distinctive to obtain protection in a particular jurisdiction.
Should I register a Roman character mark or another form of the trade mark?
One approach is to file for the trade mark in Roman characters and in the local language as some countries do not consider the foreign language trade mark the equivalent of the English version.
Brand owners should also consider whether it is appropriate to use and register a Roman character trade mark in a particular country. Local consumers may not read or understand English and may adopt their own name for a Roman character brand either by way of translation or transliteration. Or perhaps the translation or transliteration of a brand may be inappropriate for the particular product or even offensive. It may be worthwhile obtaining the advice of a native speaker/marketing expert to assist in the selection of an appropriate local trade mark.
Remember, trade mark registration is one way of protecting your intellectual property abroad. Consideration should be given to whether copyright, design or patent protection can be obtained and whether there is any confidential information and know how that can be protected.