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Your source for news, updates and guidance on all things trademarks and intellectual property.

Alt Legal Connect Session Summary: Traversing the Universe of Global Trademark Protection

Alt Legal Team | September 13, 2021
4 min read

On Monday, September 13, Lydia Gobena, Partner, Fross Zelnick Lehrman & Zissu presented the session, “Traversing the Universe of Global Trademark Protection.” Lydia discussed best practices for securing trademark rights around the world, including understanding examination differences, taking advantage of international treaties, and recording trademark licenses.

Presentation Materials: Click here.

View Recording (free): Click here.

Lydia began her presentation by explaining that in the US, use creates rights, not registration. In the US, you must show use to obtain a registration. Generally speaking, outside of the US it is very important to secure a trademark registration because use does not create rights and you need to secure rights before you can use a trademark. Rather, registration creates evidence of ownership and validity, creating constructive notice to infringers.

Because of this major distinction between US and international trademark law, Lydia explained that there are a number of key differences and points of caution that arise in the trademark prosecution process for a global portfolio. She offered several tips for navigating the process:

  • Searching: A full trademark availability search is particularly useful in jurisdictions where registration creates rights and in other countries where language involves foreign characters that are difficult to search. Unique to international searching, Lydia pointed out that there may be unanticipated meanings to marks. A full search may reveal that the mark has an offensive or different meaning in another country.
  • Consent and Coexistence Agreements: Lydia warned that you must be careful about how you approach entering into these types of agreements. You want to make it clear that you don’t think the marks are confusingly similar. Meanwhile, a coexistence agreement may cause you to give up something you don’t want to give up.
  • Modifying a Mark Abroad: When there is a potentially conflicting mark in another jurisdiction, consider adopting a slightly different mark with modifications (for example, TJ Maxx operates in Europe as TK Maxx). Another way to differentiate is to adopt the mark with your well-known house mark, eliminating any likelihood of confusion.
  • No Intent to Use: While the US allows applications based on intent to use, generally speaking, most international jurisdictions do not have a no bona fide intent to use requirement, or a requirement that you show use to obtain a registration. However, you usually do have to show use after registration. Therefore, when filing abroad, consider that block letters may not protect all forms of mark everywhere, black and white designs may not protect all color combinations, and foreign language filings with characters (particularly China, Korea, and Russia) may be helpful to block pirates.
  • Renewal Terms Vary: Registration terms and renewal periods vary by jurisdiction so be sure to check with local laws and docket appropriately. Also, some jurisdictions require a Power of Attorney, some require it to be notarized or legalized through apostille or the consulate, which can take a long time, particularly with COVID. Renewal periods are a good time to reevaluate usage with clients as laws in other jurisdictions may have changed.
  • Usage Requirements Vary: Generally, in international jurisdictions, third parties may move to cancel your registration if there is no use within a 3-5 year period following registration. You will have to check with each jurisdiction as to the timing and level of use required to support the registration. Some countries require significant use and others allow token use so long as it seems genuine. Also, you need to be careful about proper usage of trademark markings, particularly on social media, so that you and your client avoid any trouble. As a best practice, keep an evidence of use file. It is important to maintain this so that you can use it in the unlikely event that someone files a nonuse action against you.
  • Recordals: In certain countries you need to record trademark licenses if, for example, a licensee is using the mark and you are not, in order to show that the licensee’s use is for your benefit. Also, you may need to record in order for the licensee to enforce your trademark or to get royalties out of that country. In nonuse cancellation actions, if a trademark owner hasn’t recorded their mark in a jurisdiction that requires recordals, the mark can be cancelled for nonuse. Recordals can be expensive and time consuming and are often tied to renewal terms and must be continuously renewed. Therefore it’s important to have a system that tracks recordal renewals.
  • Customs Recordals: If a client is shipping products outside of the core country, consider customs recordals. Many countries allow this to prevent importation of counterfeit goods. You’ll need to provide as much information as possible to customs – photos of authentic vs. fake goods, location of manufacturing, list of authorized suppliers, examples of fake products, names of known infringers and shippers, known areas of infringement (flea markets), etc. Keep in mind that customs response deadlines can be very short!
  • Enforcement: International enforcement can be very tricky. As a US attorney, Lydia contends that she does not send letters internationally without using local counsel. While it is essential to enforce rights, or you risk losing them, you need to be careful about trying to assert use rights where another company may have registration rights in another jurisdiction. Also, counsel must be cautious when it comes to timing because by sending a demand letter, it could trigger certain deadlines which may prevent you from enforcing rights in court down the line.
  • Well-Known Marks: The Paris Convention and TRIPS are both important tools to have in your back pocket. You can apply for well-known status or claim it as part of the pending action. You’ll have to provide lots of evidence and extent of use. Just because a country is a member of the Paris Convention, not every country will accept famous and well-known arguments. The terminology used by different trademark offices varies. Article 6bis – affords protection to well-known marks even if not registered. Article 8 provides protection for trade names, whether registered or not. Article 10bis prevents unfair competition. It’s important to communicate this to people outside the US.

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