Considerations when filing trade marks abroad

International expansion is always a sign that your business is enjoying success and is no doubt an exciting frontier of opportunity. Nonetheless, expansion abroad comes with its risks, particularly when it comes to your brand.

This guide provides you with tips on how to safely navigate unchartered international frontiers.

Understanding the international landscape

One common misconception is that a UK trade mark registration provides protection in other jurisdictions. This is not the case.

Trade mark rights are territorial rights; a trade mark registration only provides protection in the territory it is registered. For example, a UK registration applies only to the UK and does not confer any rights in any other territories. Consequently, protection should be sought in every territory where your brand(s) is used.

Trade mark law differs in each jurisdiction, and in certain territories, precedence is given to those who are first to file a brand (rather than those who are first to use a brand) so it is important to file as early as possible in these territories. Ideally, you should seek protection for your brand(s) in every territory where you sell products or services.

Maximising cost efficiency

Filing in multiple territories across the world can be an expensive process; nonetheless, there are options available to maximise cost efficiency.

In certain territories, the only option is to file direct national applications using local attorneys (thus increasing the cost). Nonetheless, there are several territories where more cost-effective options are available.

EU trade mark filings

The EU trade mark filing system allows a holder to file a pan-EU filing covering all 27 member states of the EU (i.e. it can be enforced across all 27 member states of the EU). This is a cost-effective way of obtaining protection across the vast majority of Europe and is more cost-effective than filing direct national applications in the individual member states.

International filing system

The ‘International’ filing system covers around 130 countries at present, including most of the major international markets (such as the USA, the EU, Canada, Australia, Japan, India and China).

The system allows an applicant to file one application covering several territories (up to 130) within a single filing; thus, avoiding the cost of engaging with local attorneys within each territory to file.

A Trade Mark Attorney is best placed to tailor a bespoke international filing programme to suit your needs.

Traversing around earlier rights

It may be the case that you have rights for a brand in one territory, but another person/entity has rights blocking you in a different territory. Clearance searches are used to ascertain whether there are any earlier trade mark rights that could block the use/registration of your brand. Ideally, clearance searches should be conducted before filing in any territory.

If there are prior rights blocking the use/registration of your brand in a particular territory, this may require a rethink of your strategy. Your options include:

Attacking earlier rights

There may be means by which to attack the earlier rights that are an obstacle to the use/registration of your brand in that territory.

For example, in most territories, trade mark registrations become vulnerable to ‘non-use’ cancellation typically after a period of 3-5 years (i.e. if the registration is not being used it can be revoked), potentially providing you will a means of removing the earlier registration as an obstacle.

In the absence of any clear means to attack the earlier right(s), other options will need to be considered.

Consent/co-existence/license agreements

In certain circumstances, there may be scope for the respective parties to reach an agreement.

This could be in the form of a consent/coexistence agreement, whereby the parties agree to co-exist in the marketplace with certain conditions; or, a license agreement, whereby the earlier rights holder grants permission to use the brand in exchange for a fee.

Such agreements are pragmatic solutions to avoid conflict (potentially saving costs for all parties), albeit it is always difficult to predict whether the earlier rights holder will have any appetite for compromise. Furthermore, any such agreement will likely see you lose some control over how you can use your brand.

Purchasing earlier rights

There may be the possibility to purchase the earlier rights from the other party, therefore bringing them into your ownership and removing them as an obstacle by default.

Nonetheless, there is no guarantee that the other party would entertain the selling their rights particularly if the brand is important to them; nor is there any guarantee that the other party would not demand a ‘king’s ransom’.

Localised rebranding

Subject to none of the options being viable, the only other option would be to rebrand in the territory where there were conflicting earlier rights.

Whilst this is rarely the most palatable option, there are instances where companies have successfully sold the same product under different brands in certain localities.

Perhaps the best example of this is ‘SAGE’ and ‘BREVILLE’ coffee machines. ‘BREVILLE’ started in Australia and gradually expanded worldwide; however, there was already a provider of coffee machines using the ‘BREVILLE’ brand in Europe. As a result, ‘BREVILLE’ had to adopt the brand ‘SAGE’ in European markets instead.

Brand messaging

Brand owners should carefully consider the appropriate brand identity in each territory. In an ideal world, most brand owners would want the same identity and brand messaging across the board, but this is not always possible. The brand may be a strong one in the UK but could have unfortunate and/or distasteful connotations/meanings in a different country.

There are countless examples of accidental branding faux pas. For example, Coors ran a branding campaign with the strapline ‘Turn it Loose’, without realising that this phrase is used in Spain to refer to someone suffering from diarrhoea. Taking local advice is crucial.