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Extending Protection for your brand Internationally
Does my UK trade mark protect me overseas?
Unfortunately not. Registered trademarks are territorial rights which means that protection is secured per country. There are some exceptions to this rule where protection can be obtained by region, and not by country, such as an EU trade mark (EUTM) which covers all 27 EU member state countries.
It is, therefore, necessary to obtain trade mark protection in each country/territory that is of interest to you.
When to think about extending protection for your brand?
- Priority Applications
A common time to extend trade mark protection overseas is within the ‘priority period’, which refers to the 6-month period following the first filing of a new trade mark, subject to fulfilling certain conditions.
The benefit of claiming priority is that the overseas filings can be staggered to help spread the cost, and the filing date of these applications is backdated to the filing date of the first application.
- Place of Manufacture
It is good practice to obtain IP rights in the territory where your products are manufactured, labelled and packaged. If you overlook obtaining registered rights in your place of manufacture, you potentially run the risk of a third party obtaining a conflicting right which could cause serious disruption to the manufacture and exportation of your goods.
- New emerging markets or extended online presence
As your business grows and evolves, we recommend checking that your IP strategy is aligned to ensure that:
- You are free to extend your products or services to new territories without the risk of infringing third-party rights; and
- Your IP is robustly protected.
- Distributor agreements
If you have distributor agreements in place overseas, these should ideally include clauses relating to intellectual property rights. If not, a common issue which can arise on termination of distributor agreements is a dispute over who owns the IP rights filed by the distributor, more often than not without the brand holder’s knowledge. This can involve complex issues depending on the jurisdiction, so we strongly recommend obtaining relevant rights and ensuring that all commercial agreements have clear clauses relating to IP.
- Trade Mark Squatting
Trade mark squatting can be rife in some jurisdictions, and you can be blocked from registering and selling your products or services where a third party has filed for your brand. Whether this was done maliciously to sell your trade mark back to you at an exorbitant price or because they simply liked the trade mark and wished to use it themselves, it is not straightforward or cheap to reclaim these rights.
Obtaining registered rights overseas can greatly assist in enforcing your rights against infringers, particularly through making use of online take-down procedures available on online marketplaces and social networks.
How we can help?
We have substantial experience in managing worldwide trade mark and design portfolios. Extending IP rights internationally involves careful and strategic planning to ensure that the IP you seek protection for is robust and provides value to your business. We work with businesses to devise overseas filing strategies which are cost-efficient and aligned with the needs of your business.
If you would like to know more about extending protection for your valuable intellectual property rights overseas, please get in touch with Heather Williams or Jorandi Daneel, UK Chartered Trade Mark Attorneys.