The importance of trademarks to international business is constantly increasing. What pertains to U.S. trademarks does not necessarily pertain to trademarks outside of the U.S., however. Laws are different. Customs are different. Courts are different. Trademark use and advertising are different.
1. Filing Strategies. In order to navigate these challenging waters, a trademark owner needs to establish priorities for using its marks and enforcing them against third parties. Once the markets for selling goods/services are determined, including projected markets for the near future, a filing strategy for these countries must be established. This strategy might include national filings in the relevant countries, use of international and regional filing treaties, or combinations of these methods.
2. Searches. A search should be conducted before the filing process begins. Methods might involve foreign associates, search companies, trademark office databases, and the Internet. Once the risks of confusion have been assessed, the filing strategy can be implemented.
3. Prosecution of Marks. After filing, each trademark application will face prosecution under the rules and practices of each jurisdiction where a filing has occurred. These actions will involve both trademark actions from the trademark office based on registrability of a term as a trademark, and possibly confusion with third-party marks where applicable. In addition, third parties themselves may file oppositions against the registrability of a mark depending on national rules and procedures. Agents from the relevant jurisdiction will be needed to answer these claims. Once the actions have been overcome through procedures of varying complexity depending on jurisdiction, the mark will register.
4. Maintenance. Almost all countries require anywhere from three (3) to five (5) years of use of a mark to ensure its validity. Without such use, third parties in most countries can cancel the mark for non-use. In addition, all countries have renewal procedures anywhere from seven (7) to fourteen (14) years either from the filing or the registration date. The life of a mark in all countries can be indefinite, provided renewals are filed in a timely manner.
5. Enforcement. After registration registrants may need to file court or administrative actions based on infringement or various types of unfair competition. These actions may occur before trademark office tribunals or in courts of law. Injunctions, partial recovery of costs and some damages may be awarded; however, these results can take years to achieve. In most cases, a more reasonable and realistic goal is to stop use of the infringing mark.
Alternatively, global co-existence agreements may be the answer, depending on the marks and goods/services involved.
6. Trademarks and the Internet. The Internet has made the use of a trademark on a website, as a domain name, or as a new generic top-level domain (gTLD) instantaneously global. Many issues arise as a result of the vast range of uses of marks on the Internet, including jurisdiction over infringement claims, the type of actions to use to enforce claims (court of law or arbitration panel), relevant laws, and more.
7. Domain Names. A domain name, as defined in the U.S. section of Trademarks (see Section F above), is the Internet Protocol or IP address for a website, for example, www.brinksgilson.com. It is the word version of a numbering system used by ICANN , the entity that controls the registration of all domain names, to identify the location of websites on the Internet. Use of trademarks within domain names can present unlimited challenges. As with any enforcement policy, trademark owners must decide which claims to enforce. The easy place to start is with those domain names that are confusingly similar and lead to websites that sell similar goods/services. At that point, the decision to enforce will depend on budgets, chances of success, business needs, and other factors.
Infringing domain names can be enforced through administrative procedures delegated by ICANN to entities like the WIPO and the National Arbitration Forum (NAF). These entities implement the Uniform Dispute Resolution Procedure (UDRP) to determine if domain names infringe the complainant trademark owner’s rights. They also handle arbitration cases for both the old and gTLD domains and many country-level domains (.com, .br, .co.uk., etc.)
8. gTLDs. The same criteria that drive enforcement action on will drive them against new, old and country-level gTLDs on the Internet. Those generic top and country-level domains which are confusingly similar and lead to websites that sell similar goods/services warrant serious attention. After that, the usual factors of budget, efficiencies and return on investment will influence whether actions are filed in courts of law or before arbitration panels.
Countries vary in terms of how country-level domains can be attacked for infringement. For gTLD domain names, considerations of whether they are old (.com) or new (.canon) will probably dictate the type of action warranted.
9. International Protection of Trade Dress. Countries vary when it comes to what they call trade dress (look-alikes, get-up, shape, etc.) and how they protect it, if at all. First, determine what is registerable in a given jurisdiction three-dimensional aspects, sound, shape, texture, etc.) and what rights are enforceable under trademark or unfair competition laws. Once this information is gathered, strategies can be determined for protection and enforcement. As with any trade dress issues, various aspects of the trade dress (design, content, sound, etc.) may be protectable under the copyright law in a given jurisdiction.
To find out more please access our IP Primer page.
