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The Basics of Global Brand Protection

As companies continue to expand their businesses internationally, global brand protection has become critical.

Written By: Josh Braunstein
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Since a company’s trademarks are some of its most valuable assets, neglecting to clear a mark or leaving one open for infringement or dilution is not an option.  Trademark searching and watching services help establish and protect the value of a company’s brand and reduce the risk of financial loss.

A trademark is more than just a name or symbol used to identify a company and its products and services.  It represents the value of the brand in the marketplace.  If consumers easily recognize a trademark, it can be invaluable.  Conversely, if there is confusion among consumers about the source of a trademark, it could easily tarnish or diminish the value of the entire brand and company. 

While the Internet has been an incredible tool for promoting and extending brands, it has provided more opportunities for unscrupulous parties to steal brand equity or sell counterfeit goods to a global market.

With the growth of Internet commerce and borders to international trade rapidly expanding, more and more companies are deciding to venture outside of the United States and break into the global market.  To do so successfully, they must work to ensure that their trademarks will be useable in foreign jurisdictions and that competitors or pirates are not working to steal or dilute the trademarks’ value within the market. 

Going Global, Acting Local

When taking brands global, cultural considerations, local law and an understanding of where and how the brand will be used are crucial.  It is not always necessary to clear a name globally if it will not be used internationally, and it is not necessary to protect brands to the same degree in each jurisdiction.  Connotation and local language is also a consideration.  While a mark may sound fine in English, it may have a negative or offensive meaning in another language. 

In some countries, including the U.S., it is not necessary to file a trademark in order to claim rights to that mark.  Rather, countries may follow a “first-to-use” approach to trademark rights.  This means that even if an organization is the first entity to file for a specific trademark, it could be successfully challenged if another company was the first to use the mark in commerce.  Due to this, it is strongly advised when conducting trademark searches in the U.S. to obtain a professionally conducted common-law search to retrieve uses of brands that are not necessarily filed with the government.  Of course, it is advisable to file your trademark with the U.S. Patent and Trademark Office (PTO) to obtain the highest levels of protection, to serve constructive notice to the business community that you are using the mark and to assert your rights with the “®” (registered) designation. 

While a limited number of countries allow for common-law rights, in most countries rights are only enforceable by filing and registering marks.  The company that files first will usually have priority.  It is necessary to know and act intelligently on the local trademark laws in the jurisdiction you expect to use your brand to ensure that it is fully protected.

The Importance of Trademark Searching

A trademark search is an important step to mitigate risk when entering a new market.  Effort, money and brand equity can be wasted if a trademark is launched or extended into a jurisdiction only to find that another company has prior rights to it.  Costly litigation, bad press and embarrassment can follow.  A search can minimize and eliminate these risks.  Even if a company entering a foreign jurisdiction finds that no one else has registered the same mark, a confusingly similar mark in the same class or a related class of products could dilute the brand equity.  In general, a mark must be sufficiently like an existing mark and should be used on similar or related goods or services to be considered “confusingly similar.”  A trademark does not need to be exactly the same as another one to be a problem (the use of “Blue Devil” for beer may be opposed by another beer named “Red Devil” or “Blue Demon”).  A brand owner may also claim “fame” across industries and prevent you from using a similar brand on dissimilar goods (a popular computer maker could object to you putting its name on t-shirts, even if the company does not make t-shirts itself). 

The cost and amount of time it takes for a company to conduct a trademark search on its own can be high.  There is also the chance that important references could be missed.  Professional search firms can provide brand holders with an extensive array of cost-effective search services.  Many offer online “screening” services that allow you to look for close marks across dozens of global trademark databases on your own.  Using a screening tool, you can quickly eliminate name candidates that are undoubtedly going to be a problem, and then order full searches on the marks that clear the screening stage.  A professional, full search is the best option once you have eliminated obvious problem marks.  Searches can be conducted in any country and customized to the distinct needs of the brand holder.  Regional packages, global searches of key economies throughout the world and company-name searches can help the brand holders achieve the exact level of coverage they need to be comfortable moving forward. 

International Watch

Once a mark is thoroughly researched, the company should act fast to file it in the foreign jurisdiction, especially if it uses the first-to-file system.  In some cases, regional or global filing mechanisms exist to allow brand holders to file their marks in multiple jurisdictions at once.  As an example, a single filing may protect your trademark in every country in the European Union.

After the trademark has been approved by the local PTO, there is still more work to be done.  Even with a registered trademark, unscrupulous pirates may attempt to create and sell knock-off versions of branded products.  Another common scenario is that a competitor will open a store with a purposefully misleading name.  Sometimes even honest entrepreneurs in the region may unknowingly name a company or product with a mark that infringes or is confusingly similar.  To protect the equity of a brand and to ensure no confusion is created in the market, companies should invest in trademark watch services.

Trademark watch services allow a company to monitor the use of its marks globally to ensure no infringement is taking place.  This prevents dilution of the brand and preserves this valuable company asset.  By using these services, companies can actively monitor their trademarks without the need to allocate time away from in-house and outside legal counsel, or finding infringement issues by “chance.”  Trademarks can be watched at a global or local level for reporting of trademark applications.  Domain names and Internet content may be monitored as well.

Deciding Factors

Trademark search services are invaluable to companies establishing business in foreign markets.  Watch services are integral for a company that has already made the move to a foreign jurisdiction.  One of the biggest challenges a company faces when purchasing such services is to decide the scope, whether broad or narrow, of the search and monitoring.  To help make this decision, there are three crucial things that a company should consider.

  1. Determine the value of the brand.  What’s the potential for financial loss if a mark cannot be used in a certain country due to another company already using it or if there is confusion over it?  Not only does this financial loss include the brand itself, but the cost of research, development and marketing that went into creating the brand.  This answer will be different for every company. 
  2. Consider where the company sells its products today and where it wants to sell them in the future.  If it’s only selling a product in a couple countries, it probably does not make sense to search and protect the brand on a worldwide scale.  If the company already has a worldwide presence and requires the same name across different jurisdictions, then it will probably require broader search and watch services.
  3. Think about budget.  It is important to pick the right service for the job, while ensuring it is the most cost-effective choice for the budget.  Trademark search and watch services firms can consult with you to help figure out the best options to meet these objectives. 

Whatever decision you make regarding the scope of services purchased, there is no question that trademark search services are a necessary component of any decision to expand into international markets.  As a next step, trademark watch services are necessary to ensure the brand will always retain its equity in the face of infringement. 

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