Top Ten Trademark Tips – Overseas Expansion
23rd July 2014
If you are expanding overseas, considering rebranding your whole group or if you are carrying out a periodic review of your business’ brand, the following Ten Trademark Tips may be helpful:
1 Structure – Central Ownership
If there is more than one company in the group, consider moving ownership of trademarks centrally to one company, and then licensing the relevant marks to each company in the group. This helps simplify the administrative task of renewing and policing the trademarks once they have been registered. This can be even more important if your business is comprised of different divisions, particularly if the divisions are spread around a group of companies.
It is usually preferable to have the same brand in every territory, but consider whether brand is suitable for the local territory without any adjustment. For example, does it have an unintended meaning or an undesirable connotation in the local territory? Would it be preferable if the word were to be translated into the local language (ie: preserving the meaning, but not the sound), if possible?
It may also be helpful to consider whether the brand should be transliterated instead of translated (ie: preserving the sound, but not the meaning). This may assist in pronunciation, but the resulting word must be checked again for any unintended meaning.
4 Further TM Applications in Key Territories
If you have not already done so, it may be a prudent moment to apply to register the brand as a trade mark in one or more of the key target countries in which it will be used. It is not practically possible to make one truly international application. Adding countries to the international application will significantly increase the application fee, so consider what the company’s main target territories are likely to be for the next five years.
5 UK, Community TM, or International Applications
It is possible to file an application to register a mark either as: (i) a national application to the registry in the relevant country (eg: UK, USA), or (ii) a Community TM application which covers all 27 member states in a single application, or (iii) an International Application (under the Madrid Protocol), which lists the countries worldwide in which the application will be made.
6 Trademark Clearance Searches
It is usually prudent to carry out some searches of the target territories to check for existing registrations which are the same or very similar to the proposed new brand (whether or not you intend to make your own trademark application). Unfortunately it is not commercially practicable to carry out searches of every possible territory, so the search is usually restricted only to the core territories of concern.
7 Unregistered Rights
In many countries around the world it is possible to build up rights in a particular name or logo by using it in the course of trade, even where the name or logo is not registered as a trademark. These are often referred to as rights in “passing off” or “unfair competition”. Because these rights are not registered they will not be considered in any search of registered trademarks. It is usually difficult to be certain that a proposed new brand will not conflict with any existing unregistered marks. It is of course important to research the target territory, but this should not only focus on known larger competitors. It may be prudent to research in terms of both sector and geography for similar goods or services, and including those offered by smaller businesses who may not have registered their mark, but who could still present a problem in the future.
8 Third Party Logo Designer
If you are engaging a third party designer to create one or more new marks, it is important to know that they will be providing you with an original piece of work, rather than something directly copied from someone or somewhere else, or one which is simply too derivative of another mark. Some comfort can be obtained from the designer by asking them to warrent the originality of the work and confirm what clearance searches or other research has been carried out by them. The designer should be asked to sign a written assignment to your company of the copyright in any new marks which they design.
9 Company Names and Domain Names
Registration of company or domain names in the UK does not carry any additional right to prevent someone else using that name themselves, unless this has been built up through trade over time (see paragraph 7, Unregistered Rights). You should not rely on the fact that a particular name has been registered at Companies House or as a domain name as any indication that the name does not infringe any existing registered or unregistered rights. Research and, where practicable, trademark clearance searches should be carried out before registering either, and if you require further protection against another person using that name in the future, consider making a separate trademark application.
10 Challenges and Prompt Action
Although the application process itself takes several months in the UK (and many more in some other territories), most problems which can occur in relation to brands benefit from prompt action and legal advice. If you believe another person is infringing your business’ rights in its brand, or if you receive a threat or claim from another person that your business may be similarly at fault, please contact us as soon as possible for advice.
This note is for general information purposes only, is not a substitute for and should not be relied upon without taking legal advice specific to the territory(ies) relevant to you or your business. If you have any questions or would like any assistance with any matters relating to the contents of this note please contact Chris Pulham on 020 7955 1425 or firstname.lastname@example.org