How to register an international brand when you are ready to grow your business on a global scale


Congratulations for overseeing the international market for growing your business. We are living in the era of globalization and more and more companies are recognizing that it is profitable to offer their products and service offerings at a global scale at a relatively low incremental cost. low. It is an easy calculation to recognize that international consumers can be reached with the power and affordability of Internet advertising and make more online purchases globally.

As your global business field expands, it is essential to understand the importance of trademark protection for your business and the brand of its products in these international markets. Trademarks, including the name of your company, the name of your product or service offering, your logo and slogan, can be one of the most valuable assets of your business.

A trademark is a national law that requires registration in each country for which you want to protect your trademark. Even if you have a US trademark, there is no international trademark protection for your registration. This means that even if you use your brand name for business purposes, if you have not filed foreign trademark registration applications early enough, another person may legally own the trademark in a given country. We'll see how to avoid this scenario when you plan to expand your business and brands internationally.

1. Time is running out.

When it comes to trademark registrations, time is pressing. As a general rule, many civil law jurisdictions rely on the first-to-file system to give priority to the trademark owner. This may be because, unlike the US common law trademark system, where trademark rights are derived from commercial use, most foreign jurisdictions are governed by civil law systems. In these circumstances, it is best not to delay the filing of trademark applications abroad, especially if you plan to launch a product or service in the near future.

Often, one of the biggest problems facing business owners when trying to register their brands outside the US is "squatting", which describes the situation in which an unaffiliated third party registers the trademark. first the owner of a brand in a country seeking only to sell the product. Hostage registration for ransom to the real owner of the mark. As in the famous Starbucks case in Russia, where a Russian businessman earned his living by registering brands and selling them to American companies, there are unscrupulous characters who engage in squatting. by identifying emerging brands in the United States, and then filing first applications in civil law countries.

While costs may be a concern and some jurisdictions charge high fees for registration, the costs of negotiating the repurchase of a trademark of your own brand may be even higher. There is the registration and deposit fees and then the time of the lawyer involved.

2. Do your homework.

Before thinking of international deposit, you must do your homework and recognize the countries in which your products or services will have the most important market. We recommend that clients often start by grouping countries in levels A, B and C to prioritize deposits based on market size and value. This saves time and money by focusing on the largest deposits first.

In choosing where to drop, consider:

  • Which countries have significant revenue streams or consumption bases for your business?
  • Do you have commercial activities (for example, offices, distributors, partnerships or manufacturers) abroad?
  • Is the relevant market or the targeted need of your business growing or becoming significant in a given country or region?
  • Do you have plans for expansion abroad?
  • Consider "defensive" deposits in countries with high counterfeit rates such as China, Brazil and India.

In addition, to protect the brand of your product or service in another country, it is important to know how the system of this country is related to the legislation in force in the United States.

If you start alone, take the time to familiarize yourself with the trademark rules and regulations of other countries in which you want to register. The International Trade Administration and WIPO are excellent research resources. If you naturally feel overwhelmed, look at the next step 3.

3. Hire a branded lawyer.

Whether you are registering your trademark in the US only, or considering filing abroad, the advice of an intellectual property lawyer will help you to finalize all the details and facilitate the application process. brand. Without a lawyer, you can end up paying a lot of money to have your trademark registration rejected, sometimes irreversibly.

Several types of errors may occur during the filing of a trademark registration application: trademark errors, errors in the recitation of goods and services, errors in specimens or descriptions of the mark, and errors in the ownership of the brand. The first four errors are quite common and can usually be corrected. The test is to determine whether the change to correct the error does not significantly change the brand or develop the products and services outside the scope of application of the application.

A trademark registration application involves fatal errors when filing your own account without a lawyer, which can not be corrected. The most common of these fatal errors in the application are property errors that can create problems well downstream of the trademark registration and may not be correctable.

In addition, there are several countries not protected by the Madrid Agreement, such as Saudi Arabia, Canada and South Africa, for which it would be wise to hire a lawyer in the country in which you want to register your trademark.

When you hire a lawyer, you want to make sure that he is licensed to practice with the USPTO. You can search for attorneys enrolled at the USPTO here. You can also search for a lawyer through the International Association of Trade-marks, which will list the lawyers specializing in trademark law.

4. Register in the United States.

We are often asked in which country a global brand should be registered first. Before seeking protection for an international trademark, we recommend that you first register your trademark in the United States with the US Patent and Trademark Office (USPTO).

The United States is not only the largest market in the world, but they also have a quick electronic application system that can be completed online via the USPTO website. In addition, enrolling first in the US will enhance the credibility and priority of your application when you attempt to register in other countries and jurisdictions that we will discuss in more detail in point 6 below.

"Priority" refers to the beginning of your trademark rights in a particular country. Having a priority at the beginning is important because if several parties are arguing over the right to use a particular brand name (for example, you discover a competitor using a similar name), one who has prior trademark priority would have the right to to use the mark.

That's why registering in the US is the best base for foreign registrations, making it easier to protect your brands worldwide as business grows.

5. Know what your brand means when translated.

As with any product naming decision, you should carefully consider the meaning of foreign translations of your product and service names when advertising in foreign markets.

The classic example of such an issue that explodes on the face of the brand is the one where Chevrolet tried to market its Nova sedans in the Spanish-speaking world, where Nova was translated as "not going"Or" no go "in Spanish. This was not just a hindrance to public relations, but it also cost millions of dollars in lost marketing and rebranding for the company.

In another example, Parker Pens would have made a mistake in translating the advertising slogan "It will not flow in your product and will not bother you." A member of the translation team apparently thought of the Spanish word. embarazar meant "embarrass". The slogan ends up saying "It will not flow in your pocket and will not make you pregnant". Obviously, the mis-translated slogan would not be something that Parker would seek to argue.

Make sure your marketing and sales team takes into account the foreign translation of any brand name, logo, term or slogan that you want to use in that particular market. It is often wise to hire a local agent from the area you are targeting for market expertise.

6. International Trademark Treaties.

For international trademark applications, the Madrid System is an international treaty that offers a unique solution for trademark registration and management worldwide.

Under the Madrid Agreement, depositors can file a single application to protect their work in a coalition of countries that have signed the treaty of harmonization of applications. The Madrid Union is made up of countries that recognize these international brands.

In total, more than one hundred countries (118) currently offer protection under the Madrid Agreement, including China, France, Italy, Australia and the European Union. . This makes it an ideal solution to optimize the global launch of a product or service.

The Madrid Agreement allows you to select specific countries. You can also choose to protect your brand in the 118 available countries. There is a processing fee for registering a trademark with WIPO, but it is much less expensive than filing individual applications in each country, making it a very effective option.

According to WIPO, their Annual Review of Madrid 2018 reported more than 56,000 international registrations of trademarks under the Madrid Agreement, an increase of 26% over the year. former. This statistic clearly shows how the option considered in the framework of the international trademark treaty is popular and attractive for companies wishing to expand globally.

Last thoughts

For many companies, their brand is their most valuable asset. By taking some sensible steps to gain brand protection, you can ensure that your company's brand is well protected and flourishes with your company's international growth in global markets. To learn more about trademarks and intellectual property protection, see Introduction to Intellectual Property.

Feel free to contact Feras Mousilli at Lloyd Mousilli, LLC if you would like to discuss your branding strategy.

Feras Mousilli

Feras Mousilli

Technology Lawyer

Feras Mousilli is a founding partner of Lloyd & Mousilli (www.lloydmousilli.com) and advises clients on technology law issues. He specializes in advising Fortune 100 start-ups on intellectual property matters. He has served as Senior Legal Counsel for Apple & Dell and as a Patent Attorney with DLA Piper.
Mr. Mousilli was president-elect of the Austin Association of Corporate Counsel and a guest lecturer at the University of Texas and the University College of Law, Berkeley. He is the proud recipient of the Covington Pro Bono Award and has been selected by the Texas Monthly as a rising star in Super Lawyers.
Feras holds a Bachelor's degree in Biomedical Engineering and Computer Science and a Master's degree in Computer Engineering from Johns Hopkins University. He obtained his doctorate in law from the law faculty of the University of Texas.