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Managing an International Trademark Portfolio

By John DiGiacomo

Because trademark protection is territorial in nature, managing an international trademark portfolio is complex. Your company may have one trademark or hundreds, in either  case you need experienced and skilled trademark legal counsel who will help you prioritize and protect your portfolio.

The general issues for managing any trademark portfolio are:

  • Creation (or discovery) of a strong trademark
  • Registration (including pre-registration research on prior use, other use, similar use, etc.)
  • Renewal, filings and annual fees
  • Use of the trademark, which is required in some countries but not in others (proper company use and use by affiliated/owned companies, franchisees, and licensees)
  • Protecting your trademark so it remains distinctive
  • Monetizing (via “use-of” contracts and licenses; writing, monitoring, renewing)
  • Collateralizing (via financing agreements)
  • Enforcement (litigation and political action)

International trademark portfolios add an array of complexity depending on how many countries and languages are involved.  A non-exhaustive list of additional issues include:

  • Variable and differing trademark registration regimes (national, regional, and international)
  • Varying use-of requirements
  • Translation/transliteration of trademarks into new languages, alphabets, and symbol systems
  • Dynamics of local markets (which might differ significantly from one to the next and from the US market)
  • Differing local laws (including issues concerning trademark use, registration, protection, and enforcement)
  • Differing local policing policies and priorities regarding preventing counterfeiting (in real space and on the internet)

Proper Portfolio Management Means Registration With the Right Regime

As we discussed recently, the Madrid System is an expansive international trademark registration and protection system governed by multi-party, World Intellectual Property Office-administered treaties. As of July 15, 2017, 114 countries had joined the Madrid System.

The Madrid System provides a centralized trademark filing and registration for all Contracting Parties. The main advantage is that your company can obtain trademark protection in more than one country using a single application through your home country.  That is, if you filed an application for a trademark in the United States, that same application can be used for registration in any of the countries that have joined the Madrid System. The Madrid System also facilitates the translation of multiple languages so that if you file your application in a language with which you are familiar, the trademark registration process will be completed in that language. The Madrid System has some obvious advantages.

There are, however, some reasons the Madrid System may not be the best option for your business even if it is seeking trademark protection in many countries.  For example, the Madrid System makes every registration you obtain through its centralized process dependent on the trademark registration in your country of origin for five (5) years.  If the trademark registration from your country of origin is abandoned, canceled, or if it expires within this five-year window, all foreign registrations obtained through the Madrid System using your home registration are at risk.

In addition, the Madrid System may not be broad enough for your needs.  Several countries in the western hemisphere have not joined the treaties that facilitate the Madrid System. Notable missing nations are:  Argentina, Brazil, Canada, Chile, Venezuela, Panama, Belize, Peru, and others.

If you only seek registration in one other country, it may be more cost-effective and safer to work through local counsel in that country.  The regional registration regimes include:

  • European Union Trade Mark (“EUTM”) system (EU member states)
  • African Regional Intellectual Property Organization (“ARIPO”) system (English-speaking African nations)
  • Organisation Africaine de la Propriété Intellectuelle (“OAPI”) system (French-speaking African nations)
  • The Andean Pact (reciprocal recognition regime covering Bolivia, Colombia, Ecuador, and Peru)

An experienced trademark attorney can help you decide which registration regime is the best for your company and can help prepare file your application(s).

Proper Trademark Portfolio Management Means Regular Auditing

Regular and routinely scheduled trademark auditing is essential for managing international portfolios. Maybe you and your business have already done the registration(s). However, is the registration correct? Could the registration be better?

One of the issues mentioned above is the varying “use-of” rules under the different national, regional and international registration regimes. Under the EU rules and under the Andean Pact, business use of your trademark in one signatory nation usually will be sufficient to constitute “use-of” in all the signatory nations. That is not true for registration under the Madrid Protocols. So, a trademark audit is essential to ensure that you and your business have registered under the best-for-your-business regime.

Proper Portfolio Management Means Policing Trademark Rights — International Challenges

In general, you and your business need good policing and enforcement strategies that protect your trademarks from infringement. The basic list is:

  • Marketplace Monitoring
  • Investigating possible infringements and counterfeiting
  • Warning and prosecuting those who are infringing
  • Seeking police/regulatory action for counterfeiting, piracy, etc.
  • Engaging in political action/lobbying for statutory and regulatory changes where needed

These strategies are more challenging with a portfolio of international trademarks. For example, you and your business must employ citizens in the countries in which you do business to monitor the marketplace. Warnings and legal prosecutions must be done in the local language. Local customs may need to be evaluated, understood and factored in. Seeking government or regulatory intervention will require local citizens familiar with local politics and procedures.

Proper Management of an International Portfolio Means Navigating Language Issues

International business requires using all the languages of the world. This requires proper translations. But the challenge is not just word-for-word translations. Proper trademark management has to contemplate dialect, idiom and “street usage” of the local tongue. In a famous example from years ago, Ford Motor Company sold a car called the Pinto. In Brazil, the word “pinto” was street slang for male genitalia. Ford would have been better off rebranding the car model for that market. Proper trademarking management can help avoid snafus like this.

There are also numerous challenges with languages, like Russian and Greek, that use a different alphabet and those, like Chinese and Japanese, that use symbols and ideograms. As an example, the Chinese employ about five thousand ideograms in day-to-day usage. The key to successful marketing and trademarking is for local consumers to be able to read, pronounce and remember the brand/mark. So, if you want your trademark to succeed in China, you need the right ideogram or combination thereof. In another example from the Huffington Post article linked above, the famous “Got Milk” campaign in the United States was translated in Mexico as “Are You Lactating.” Obviously, that was a failure.

To properly manage your portfolio of international trademarks, you and your business must navigate these types of language issues.

Proper Trademark Portfolio Management Means Technology and Staffing

To manage a portfolio of international trademarks, you and your business need technology and trained staffing. You can use software as simple as Excel or buy tracking and scheduling software that is specific to trademark issues. The preferred software systems facilitate online access allowing entry of relevant information into the database from anywhere and from any and all employees tasked with monitoring and protecting the trademarks. The best software also provides for easy manipulation of the data and generation of various reports. This creates efficiencies, centralizes the task management, avoids duplication and thereby saves money.

Proper Portfolio Management Means Hiring the Right Lawyers

Managing and protecting your international trademarks is complex and multifaceted. To do it right, you need skilled trademark attorneys like those at Revision Legal. We can help you and your business navigate the complexities. We can help with evaluations, audits, applications, renewal, monitoring, warning letters to those who are infringing, and all other aspects of protecting your trademarks.

Contact us today.  We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to working with you.

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