Tips for Protecting Trademarks Internationally

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Brand owners and companies should consider maintaining strong trademark protection in the foreign jurisdictions where they often conduct business.  If a company maintains some trademarks worldwide and others only regionally, this may leave that brand open to claims of trademark infringement, unfair competition, or even abandonment.

International Trademarks – Jurisdiction Based on “Commercial Effect” of Trademark Usage

Although no universal or formal law governs all trademarks identically for international use, the World Intellectual Property Organization (“WIPO”) and the Assembly of the Paris Union for the Protection of Industrial Property often adopt Joint Recommendations that provide brand owners with some standards to follow.  Specifically, the guidelines set out the procedures for how parties may sue others for trademark infringement or unfair competition.  The Recommendations focus on whether use of the mark on the Internet has a “commercial effect” on the disputed jurisdiction.

First-To-File Governs Many International Trademarks

While the definition of “commercial effect” generally varies from jurisdiction to jurisdiction, countries that have adopted the Joint Recommendations generally recognize “commercial effect” as the simple offering of goods and services on a website.  As such, when a brand owner provides goods and services to a consumer in a market, they should ensure that they register the trademark in that country to avoid claims of trademark infringement or unfair competition.  And because many foreign countries operate on a first-to-file basis in their country, U.S. priority filing dates are rarely available to U.S. companies when trying to defend against claims of trademark infringement or unfair competition in a foreign jurisdiction.

Marking Requirements for International Trademarks

Further, brand owners should follow proper marking standards of the foreign jurisdiction.  Like the United States, many countries use the ® symbol to indicate that the mark is registered and protected under the national trademark office.  “TM” and “SM” is not officially recognized, and therefore does not guarantee any legal protection for the mark, but use of the “TM” and “SM” can still serve some notice that the owner intends to claim rights in the mark.

Perils of Improper Marking

Note, however, that improper use of the ® symbol internationally can result in claims of unfair competition, fraud, and trademark infringement.  Moreover, consequences for improper use include, but are not limited to, prohibition of marking and distribution of services, bar to trademark registration, injunctions, and even imprisonment.  Specifically, because some jurisdictions such as Germany or the United Kingdom consider false representation of a trademark to be a criminal offense, improper marking can have particularly severe consequences abroad.

Even if the brand owner is unaware of the country’s trademark rules regarding marking, this does not abrogate the brand owner from findings of “willfulness.” Some countries may still find that the brand owner intended to deceive or mislead consumers when improperly using the ® symbol, which results in increased damages and other legal penalties. Moreover, some countries, such as Chile and Costa Rica, go as far as to require marking of trademarks, whether registered or not.  A such, improper marking must be avoided at all costs.

Benefits of Consulting International Counsel

In conclusion, companies that operate internationally should consult experienced trademark counsel regarding the proper protection of their trademarks abroad.  Improper marking on the Internet or in foreign jurisdictions can lead to dire consequences for brand owners.  To avoid litigation, experienced counsel can advise brand owners on how to properly mark their trademarks online and on internationally-distributed materials.

For more information on this topic, please visit our Trademark Management service page, which is part of our Trademark Practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.

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