One of the most challenging aspects of protecting a trademark in the world today is protecting the trademark internationally. Because there is not a simple way to ‘globally’ register a trademark in every country, a trademark owner must register its trademark rights in each and every individual country where it seeks protection.
The following four reasons are just a few of the many points that support the importance of trademark registration for United States businesses in other countries around the world:
1) If you operate online, your products may more easily reach global consumers.
One of the major benefits of e-commerce and online selling is that it’s much easier for your business and your products to become available to international consumers. It’s always up to you where you want to ship your goods, but the ease of access to the global marketplace via the internet presents a prime opportunity for business growth – one that retailers and other product distributors find difficult to pass up.
Once your products reach international markets, however, your business name and brand – and your trademark – may become more desirable as your popularity grows. Registering your trademark in other countries where your products are available can prevent other businesses from attempting to confuse buyers by using an identical or similar name and trademark to yours.
Ill-intentioned parties may try to trade on your popularity by adopting your name, logo, or other brand signifiers for their own benefits and businesses – potentially damaging your reputation through inferior quality or service, and hence reducing your potential for profit.
2) You may be more vulnerable to counterfeiters based overseas.
In addition to those who may wish to profit off of your name, similarly, there are those who may just go so far as to replicate your product for their own gain, trademark and all. The counterfeit market is a boom industry overseas, especially when companies do not register their trademarks internationally.
While U.S. trademark law provides protections against counterfeit imports, taking the next step of registering your trademark in countries where you believe the counterfeits are originating can help you take an even further step toward stifling the flow of illicit goods bearing your business’s name and mark.
It helps you proactively involve the local government in the country where the illicit products are being made, and as such can help prevent counterfeit items from reaching shores other than those of the U.S. (or wherever your home country may be).
3) Your supply chain may involve international commerce.
Even if you choose not to sell your products worldwide, they may have international reach in other ways – for instance, in your manufacturing supply chain.
Depending on what you sell, and how its manufactured, it’s important to be aware not only of where your suppliers operate, but where their suppliers may be based as well. You’ll want to consider registering your trademark in countries involved in your supply chain to prevent, for instance, situations where a subcontractor may illicitly appropriate your name to profit from their involvement with you.
Listing you as a customer is one thing (provided they haven’t signed an NDA) – but companies may be tempted to, say, try to present themselves as a division or subsidiary of your business.
With a registered trademark, you’ll be able to more strongly and effectively police and prevent these types of situations, or others like them, from occurring, and companies will be less likely to even make the attempt if they’re aware of your registration.
4) Under the right circumstances, you may easily register your mark in other countries through the Madrid Protocol.
The Madrid Protocol, depending upon your home country and the other countries in which you wish to register your trademark, can be a streamlined way to receive international protection (based on local law) with fewer application steps.
The protocol allows a trademark owner to submit one application (through an organization called the World Intellectual Property Organization or WIPO), and, that application can then be “extended” to various different countries that are members of the protocol. This makes for a very significant cost savings when filing trademarks in various countries.
Keep in mind that your trademark application must meet all local standards (not just those of your home country), and you must protect your mark vigorously to avoid challenge or cancellation, but in any case, the availability of the Madrid Protocol makes a strong case for international registration, based on the added convenience alone.
Like all trademark law, the Madrid Protocol – and any international registration, requires careful, accurate, and well-researched actions on your part. It’s recommended that you consult with a trademark attorney in order to create a better chance of successful registration on your part, as well as to know what kinds of protections you’ll receive in each country in which you own a trademark.
An attorney can also advise you on any areas of weakness or vulnerability where you should be concerned about international trademark protection, and can help you to receive all the benefits you need and are entitled to.
If you’re interested in filing an international trademark, contact the experienced attorneys at Gerben IP today.