Trademark protection: It’s a tougher ballgame overseas
By R. Scott Tobin, Esq.
Almost everyone in the furniture business has gone global. Thanks to the worldwide reach of the Internet, if you have a web site, you have a global business, even if you have never otherwise considered international expansion.
If you have over the years painstakingly developed and protected your U.S. trademarks, you must not assume that you can maintain and enforce your U.S. trademarks in other countries. To the contrary, trademarks exist separately in each jurisdiction in which they are registered or legally recognized. Even if you have a trademark widely known in the U.S., your trademark rights end at the U.S. border. This is true even where you can prove your long-established U.S. mark has been “stolen” or imitated overseas. A foreign entity may establish a superior right to the mark by beating you to the overseas filing office and using the mark.
To enhance international protection of your mark, there are a number of strategies you can employ. The first rule is to know what you are getting into before you use the mark in a foreign country. A foreign trademark search will help you determine the mark’s availability for registration and the likelihood of third party claims. If available for registration, generally speaking, you should register the mark in the foreign jurisdiction. Even if working through foreign licensees or distributors, care should be taken to register the mark in your own name to avoid inappropriate registration and usurpation of your mark in the name of the licensee or distributor.
Importantly, you must recognize that most foreign jurisdictions use a “first to file” rule rather than the “first to use” rule employed in the U.S. In the U.S., trademark rights are acquired by using the mark in connection with the sale or offering of goods or services, regardless of whether the owner receives federal registration of the mark. By contrast, most foreign jurisdictions do not recognize trademarks until they are formally registered. That said, there is a catch if you decide simply to register in every country in which you conceivably might do business. Failure in most foreign jurisdictions to use the registered mark within a specified period, typically from one to five years, can leave the mark unenforceable or vulnerable to cancellation by a third party. Accordingly, the time and expense of registration should only be undertaken where the mark is going to be used in a meaningful way.
Fortunately, there are at least a couple of alternatives to country by country registration. In Europe, you may apply for a Community Trademark (CTM). The CTM involves a single trademark registration through the European Community Trademark Office which protects a U.S. trademark holder (because the U.S. is party to the Paris Convention) from infringement in all European Community nations.
Additionally, other treaties, principally the aforementioned Paris Convention, protect marks in international jurisdictions. The Paris Convention, with well over 100 members, requires its members to accord citizens of other members trademark rights comparable to those given their own citizens under local law, without strict reciprocity. Filing an application with a member country within six months of your home country application gives you the filing priority date in the other member country of the home country application.
Member countries also must refuse or invalidate registration of a mark that could create confusion with the well known mark of a national of another country. For example, this was the mechanism invoked by McDonald’s in protecting its mark from use and registration by an unrelated South African fast food chain.
Of course, where your international expansion occurs through advertisement of your products over the net, you face many interesting yet unresolved trademark issues. Must you register the mark in every country with access to your web site? Does your web site advertising constitute use of the mark in a meaningful way? Does a foreign court have jurisdiction over you to enforce the claims of those in its country that allege prior rights to the mark? Will U.S. courts enforce such judgments? How can a foreign court’s injunction against your use of the mark in its country be imposed on your web site without impinging on your right to use the mark in the U.S.? There will be no easy answers to these questions.
As courts, legislators, and treaty negotiators wrestle with such issues, your focus, in the international context, must be on the advance planning necessary to protect your marks. If you even contemplate international expansion, and in the Internet era this has become harder to resist, involve your counsel and other advisors early on in your planning. The rules do vary somewhat from country to country and you must understand the rules prior to entering a market to minimize the risk that your trademarks are pilfered or that you make the expensive mistake of infringing the foreign country rights of others.
Scott Tobin, a principal of Synergy Ventures, LLC, can be reached through Modern Woodworking at 770-399-5114 or 336-882-0120
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