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Protecting your brand in international markets
Theresa WrightJune 2013
Trade marks are territorial• Limited to country or territory where registered.• Protect where you use or intend to use.• “Use” encompasses manufacture and sale to
consumers.
Relative availability• Cannot register or use a brand if identical or
confusingly similar to a prior mark for same/similar goods/services already registered or in use in any given territory.
• Even if the brand is applied only to goods for export in a manufacturing country.
• Search:We can help devise a strategy based on your commercial needs and circumstances.
Manufacture and Export• The same applies in most countries.• So: You must clear all brands in countries where you
manufacture/brand the relevant goods (e.g. China, India, Vietnam etc.)
• Even if you don’t sell to consumers in the relevant market.
Inherent registrability• Trade marks must not be e.g. descriptive, generic,
misdescriptive or offensive.• Judged based on local legislation in each relevant
territory.• May be inherently registerable in South Africa – but
not necessarily everywhere else. • Negative connotation?• Choose a distinctive brand that will work in all the
countries where you intend to supply.
Register
• Protect yourself from infringers and trolls• Protect your local
partner/distributor/manufacturer• Secure a clear right and easy remedy• Create an asset that you can more easily
value, license and transfer.
AFRICA
• Major growth opportunities – particularly for South African retailers:
• Consumer goods market makes up over 60% percentage of Africa’s GDP.
AFRICA• In former French, Portuguese, Belgian and Italian colonies,
“first to file”.• Most former British colonies “first to use” – but costly and
uncertain to prove.• Very limited protection for “well known” marks (e.g. COKE,
COLGATE) – but most South African brands won’t qualify.
AFRICA• Dumping ground for counterfeit goods – registration
of customs notices is a useful enforcement tool.• Particularly damaging if health implications.• Increase in “squatting” – particularly in Nigeria• Important to record registered users in most African
countries.• No service marks in some countries.
CHINA• First to file.• China, Taiwan, Hong Kong and Macau have separate trade mark
legislation and registers.• No protection for unregistered rights.• Possible to register copyright to ease enforcement.• Squatting for ransom prevalent.• Not-infrequent Customs seizures.• Register if only to “ring fence” your key brands.• Do not let your manufacturers register your brands.
ELSEWHERE
• Middle East expensive – but also troll issues.
• Convention priority claims possible.• Blocks: CTM, OAPI• Madrid Protocol/Agreement
applications.
REMEMBER• Distinctiveness is key.• Short run or long term?• Use it or lose it!• Regular portfolio reviews:
– Are all your trade marks still in use/important?– Are all your important trade marks protected
where they should be?– Are your trade marks covered for all current
goods/services?
REMEMBER• Consolidation and control:
– Ownership– Representation
• Licenses and registered user recordals.• Watches.• Marking.• Copyright.• Keeping your details up to date in the Register(s).
