We all know that developing a global strategy saves money in the long run, and if coupled with brand strategy, you can build strong brands. However, trademark rights are recognized on a by country basis. Business owners are required to register on a per country basis in order to enforce trademark ownership. We have prepared some points to consider when rolling out a global trademark strategy.

  1. In developing the strategy the legal and marketing team should work together for new marks. This includes processing the selection of marks, developing the priorities such as names of key products and sub-brands, conducting clearance searching and identifying marks to file. Also, working with the internal business and marketing teams ensure a consistent approach in selecting and protecting marks.
  2. Trademarks should be filed as soon as mark has been adopted for a new product for protection. in prioritizing where to file, the intellectual property rights and the company’s important assets have to be audited and properly identified. This will include the trademarks for the key products that were needed to register in enforcing the rights. In addition, the trademarks must also register in the country where it is manufactured, sold, and where counterfeiting is prevalent.
  3. For budgeting/cost concerns, prioritize the most important assets. Then, file into the most important countries that provide the most leverage to your business as the worldwide enforcement is prohibitively expensive.
  4. As for filing a systematic way of method or strategies must be followed:
    1. File quickly file before discussing business arrangements with potential partners or file as soon as the trademark search is conducted and/or before full assessment to obtain a priority date;
    2. File smartly and take advantage of the priority claim as much as possible
  5. In case of infringements or settlement agreements, take note of the following trademark enforcement arms below. It may vary between countries but the most common are the following:
    1. Trademark office
    2. National courts
    3. Customs

 

A little about “high risk countries”:

China has one of the highest  rate of the trademark application, despite it being included in the High-Risk Countries list. Since most products are manufactured here, it just makes sense to immediately file for trademark in China.

So to summarize, here is your global trademark application strategy in a glance:

  1. Watching and prioritizing the issue;
  2. Prioritizing countries where to file the trademark;
  3. Developing the standard position on when/how to pursue infringements;
  4. Developing standard terms for settlement agreements.

 

MUSA Trademark can help you define your global trademark strategy, because in today’s world, filing in just one country isn’t enough. Contact MUSA today to know more about protecting your assets.