Tips For Protecting International Trademarks
Most manufacturers, who produce goods marketed and sold in the United States, want to protect those goods and services with a trademark. When goods or services are to be sold on the international market, a trademark is equally as important. Every country has its own notice laws with regard to trademarks and its own laws and methods of handling trademark disputes. However, to ensure protection worldwide, it is recommended to register your trademark with the World Intellectual Property Organization (WIPO). An attorney can:
- Research the forms of notice required in any country where the goods or services will be marketed. For example, determine whether the TM and ® symbols from your country offer any legal protection in the target market.
- Research the laws of the foreign countries so that you understand, before any trouble arises, what liabilities or penalties there may be if the goods or services are not properly trademarked under the rules for that country.
- Research the history of how courts in that country have handled trademark disputes.
- Research whether the country is a signatory to any treaty covering intellectual property.
- Research the availability of various enforcement mechanisms should a question or dispute over trademark rights arise, including alternative dispute resolution (ADR), opposition proceedings or litigation.
Examples of Foreign Trademark Laws:
- In Ecuador, trademarks may be indicted by the words, “Marca Registrada” or “®” and must bear an indication of origin if manufactured in Ecuador.
- In China, failure to use a mark for three consecutive years can result in cancellation of a trademark registration.
- In Japan, a party that objects to the registration of a trademark can file an opposition within a two-month period following registration.
These examples of variations in national trademark laws illustrate how a trademark owner’s rights in a mark can be impacted when doing business overseas. Planning appropriately for these distinctions requires comprehensive knowledge of the national law and any applicable treaties. In many cases, the trademark owner’s attorney will need to consult local counsel in that country.
Thomson-West provides print and electronic products that provide further information about this process and the law concerning trademarks. See http://www.Thomson-West.com.
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