The individual countries will vary by each brand’s needs, but in general it would be as follows:

a)      Country of Origin (should be first filing)

b)      Country in which your product is manufactured.

c)       Country in which your product/service can be purchased/sold.

Many brands are first sold into a country through a distributor. Do NOT let your distributor file your trademark on your behalf. An international brand is strengthened through consistency and control of its trademarks.

It may seem the easiest way to do it at first…

…until you are faced with a legal situation to win back the right to register your own brand in that country.

…until you are faced with a legal situation to win back the right to register your own wine label in a country where you have been doing business for years. Possibly they stop you from importing there in the future as well.

…until you need the strength of your international wine brand to win an opposition somewhere, but find there is none because the trademarks were not registered in a consistent manner.

Your USA (EU, Chinese, South African, etc.) distributor does not know your worldwide goals. Each trademark, if filed properly, contributes to the strength of your brand worldwide. If there is no consistency, there is no strength in your brand name and you will not achieve worldwide famous strength.

So all you need to do to get started is choose your countries and contact us to provide a quotation tailored to fit your budget and your brands’ needs.

The first step towards establishing your brand name is to file a trademark application in your home country.  This first filing is critical towards creating a trademark that will be strong in the international market.

It is important to file the first trademark application with an eye towards future expansion.

In many countries, where World Wide Famous arguments are accepted, the first trademark registration becomes the basis for all future international trademark filings. It will be the guideline from which to file trademark applications in all future countries.

It establishes the date of first use internationally, a critical fact in trademark litigation. And it establishes the goods or services you were selling as of that initial date.

In some countries, a trademark registration from another country can be used to prove trademark usage, instead of actual sales in that country (such as in USA, but not so much in Canada). So in some countries, it is actually possible to file a trademark registration without yet doing business in that country.

So while you may be just starting out in your home country with your new product, that first trademark application should be made with an eye towards future worldwide growth. Consider your name, your goods/services, and the question of logo/font very carefully not only in terms of domestic sales, but international expansion as well.

The internet is a good way to pre-search your proposed new wine name in multiple countries at very low cost. For example, a very popular Australian wine that is exporting to European Union or USA will show up in an internet search if you put in your proposed wine name into Google or Yahoo. Dozens of international trademark offices have their trademark databases on line for free searching too.

Consider your brand name carefully, not only in terms of domestic sales, but international expansion as well. Consider what kinds of wines might eventually be added to your first offering. Consider if you want to be locked always into a single logo on every now and future label, in every single country ? Or not.

Because if you do not own the registered trademark, someone else can register it and try to force you to stop doing business in that country.

Because that someone can have your goods seized upon importation to that country due to trademark infringement.

Because that someone can profit from the good will and recognition that your trademark has developed worldwide.  You made your product and its brand name famous.  Why let someone else in another country reap the benefits of your hard work?

And because filing a new trademark application is much less costly than the international legal steps (and related costs) necessary to reclaim your trademark back from that someone who already owns it.

Best case scenario, your distributor filed the trademark and is willing to transfer the ownership to you for nothing more than his costs.

Worst case scenario, a third party, with full rights to the same name, has a prior claim to your brand name and is not willing to co-exist with yours.  They can have your goods seized by customs which closes that country to your brand, not to mention costs you lots of money and time.

“Penny wise and pound foolish”, my mother used to say.

Do it properly from the beginning, and save yourself grief and increased costs later.  Don’t wait.  Start the process early on in your international expansion.

Ellen Varner, “Mrs-Trademark” since 1998, is a global trademark strategist. She works closely with international lawyers and you to provide the best trademark management in each country, coordinating them all to insure that your brand gains trademark strength on a global basis. She is not a lawyer and this is not a legal opinion. This is the first in a series of blogs on World Wide Famous Trademarks – How To Make Your Brand Strong As You Grow Internationally.