Making Your Mark on the World
Tom Clancy doesn.t know how good he has it. When he writes his next techno-thriller, his copyright protection won.t just stop at the U.S. border. He.ll have automatic rights in most countries around the world. And while he may have to fend off pirates making unauthorized copies, or selling on the black market, his rights as the sole copyright holder will be internationally recognized.
Inventors enjoy similar good fortune. Thanks to an international treaty, individuals and businesses applying for a patent can check a box and automatically file a patent application in dozens of countries.
Not so for U.S. businesses trying to protect their trademarks.
Just because you have trademark rights in the U.S. doesn.t mean you have rights in Canada, or the UK, or anywhere else you may want to do business. Also, even if a trademark is available for use in the U.S., it may well be unavailable in other countries. World governments have been slow to overcome their political differences and develop a system that, like copyrights and patents, helps companies easily establish and protect their brand identities worldwide.
But times may be changing. Many countries have already joined the Madrid Protocol, designed to give the same international .check a box. service to trademark registrants that patent applicants now enjoy. For years, however, the Madrid Protocol has languished in the U.S., owing to a dispute with the European Union. The latest word from Washington, however, is that the logjam may finally be breaking, and trademark applicants may soon be able to take advantage of streamlined registration around the world.
It.s just in time, too. With e-commerce breaking down international barriers, more and more companies are struggling with the territoriality of trademarks as they try to bring their branded products and services overseas.
Use It or Lose It?
Even if the U.S. joins the Madrid Protocol, U.S. businesses will need to remember that trademark law is fundamentally different in other countries. In the U.S., trademark protection is based on the .use it or lose it. philosophy. While trademark registration in the U.S. offers many benefits, a trademark holder.s rights derive from actual use.
The reverse is true in most of the rest of the world. Trademark rights in most other countries are based on registration, and you don.t have to prove that you.re using a mark in order to register. While this system makes it easier for businesses to design and implement a long-term global branding strategy, it also creates a larger bureaucracy for companies to manage, as well as greater risks for .losing out. on a valuable mark in a given country.
There are other differences, too. In the U.S., a trademark registration covers a specific product or product line (breakfast cereal, for example). In most other countries, trademark registrations can be much broader, often covering an entire class of products such as .food.. Because trademark rights outside the U.S. are based on registration, the first entity to register a specific mark can enjoy extremely broad rights.
One unfortunate side effect is that unique trademarks are becoming increasingly difficult to find. Even in the U.S., many companies often discover that the .good. names are already in use. When companies do availability searches in other countries (an essential branding step), it becomes clear that the pool of available international trademarks is even smaller. As a result, companies are turning more and more to .created. names that have no literal meaning (think Diageo or Aventis), or to other branded features such as designs, shapes, colors, and slogans that can be used as unique identities.
But even if they pull a name out of thin air, companies thinking globally must take pains to register their new brands quickly in all the countries in which they may seek to do business. Otherwise, they could face a costly and protracted effort to dislodge someone who is blocking their international business plans.
It is not uncommon, for example, for a company to find that someone in another country has effectively taken their brand .hostage. by registering it with the sole purpose of selling the brand back when the company decides to enter that country.s market. Sometimes, brand thieves also come disguised as friends. A distributor or licensee, for example, may obtain a registration in their own name, ostensibly to protect your interests. But in fact, because they become the trademark holder, it gives them leverage and power.
There are other good incentives for a broad-scale registration program. In some countries, if you want to export products, you first have to register a trademark in order to obtain a license. In other countries, you need to be registered in order to take actions to stop infringement or counterfeiting. For example, if you have a manufacturing facility in a given country, but no plans to distribute your products there, you should still consider registering your marks in order to protect yourself against infringement, counterfeiting, or even unauthorized sales from the plant.
Remember, too, that trademark registration goes beyond product names and catch phrases. Anything that distinguishes your products or services, but is not primarily .functional,. will fall under the trademark, trade dress, or service mark umbrella in most countries. A thorough audit of your intellectual property resources will help thwart would-be imitators as you take your brands overseas. In addition, remember that language can be a barrier: many English slogans use jargon that doesn.t translate well in other countries. (The classic example is the Chevy Nova, which, in Spanish, means .doesn.t go..)
In many international venues, it.s best to get advice from local counsel before deciding on a brand identity. As past president of the International Trademark Association, I.ve had the good fortune of building a network of contacts with experienced trademark professionals around the world. And I.ve found consistently that working with the right local contact helps companies avoid both business and legal tangles.
Policing Your Brand
Obviously, the trademark process involves much more than gobbling up registrations in every country from Abu Dhabi to Yemen. For one thing, even though trademark registration is modestly priced in most countries, it gets costly to cover the world with registrations. Most companies choose to focus their trademark efforts on the countries where they are likely to expand, or where they have encountered problems with infringement or counterfeiting.
Registration also doesn.t last forever. In most foreign countries, a registration lasts for ten years and can be renewed for consecutive ten-year periods without having to show use. However, if a trademark hasn.t been used for a given period of time (usually three years), another applicant may challenge a mark, resulting in the registration being cancelled for abandonment.
There are a variety of steps to streamline the process, however. For example, companies that wish to do business in Europe can register across all the member states of the EU with one application, and as long as the company uses the trademark in just one of the EU countries, the registration can never be cancelled for abandonment.
Companies also need to watch out for trespassers on their brands. Most countries publish trademark applications for possible opposition before issuing a registration. Many companies hire outside counsel to monitor such postings, in order to watch for possible trademark infringement. .Policing. your trademarks worldwide is critical to maintaining the strength of your brand from both a legal and marketing standpoint.
The Real Thing
Not all brands are created equal, of course. If you have a famous mark like Coca-Cola, you can usually thwart companies that try to infringe on your product identity, even if you haven.t registered in a given country . although it.s unlikely that there.s even a deserted atoll in the Pacific where Coke isn.t registered.
But that.s the important lesson. Even a company with the brand power of Coke realizes that the fastest, most cost-efficient way to protect its trademark rights is to register broadly where it plans to do business and then aggressively enforce its marks. Any company that wants to make its mark on the world should do the same.