I love the new year.

I am psychologically reset and energized every January. A clean slate on which to be just a little "more" (or “less”) this year than I was last. I set new goals and allocate my new budget.

If you are doing the same, don't forget to allocate “international trademark protection” in your budget.  If you are considering expanding your brand overseas, NOW is the time of year to start your global brand expansion..

Here are just a couple of reasons that trademark owners should strongly consider expanding their brand's international portfolio in 2016, earlier rather than later.

  1. The strong dollar in most currencies means that it costs you less to buy something foreign (such as a trademark filing). The dollar is expected to weaken over the course of the year.
  •  in Mexico the IMPI has raised trademark fees, but the Pesos' steady decline against the dollar means foreigners will hardly feel it. Exchange 18.22 Pesos to USD$1.
  •  in the European Union rates will change on March 13...the OHIM will be called the EUIPO... and a CTM will be called an EUTM. Exchange .92 Euros to USD$1.
  •  in Turkey the TPI has raised rates, but because of the favourable Euro USD exchange, is now less expensive to those paying in USD.
  • in Kuwait the MCIPT raised rates up to 15 fold on some filings...Venezuela, Argentina, Saudi Arabia and UAE all made similar moves in 2015. Help offset these huge increases by paying in Euros, where your "dollar" goes farther.
     2.  Several countries are expected to increase prices sometime in 2016. You should file in some places
          before that happens: EU (28 member countries), India, and Bahrain, among others.

     3. Some countries have recently de-creased their trademark fees: Brazil, USA, China, and EU to name a few.

Think you can not afford an international trademark ?  Think again.

Think instead, “this is the year I can afford to expand brand X worldwide!”

Act quickly before the dollar begins its inevitable decline
Once you have started your trademark’s legal worldwide presence, by having lodged your application in your country of origin, you can “police” your own trademark worldwide without actually having applications filed in any other countries (yet).

In nearly every country, a trademark is published in the Trademark Gazette.  The period is called the Opposition Period, which generally lasts 30-90 days.

When you order worldwide trademark watching service, we watch all the Trademark Gazettes around the world for all exact and similar brand names to yours, everywhere in the world:

--Exact matches over all class codes

--Phonetic (how it sounds) as pertains to your specific product(s)

--Spelling (how it looks) as pertains to your specific product(s)

It is generally considered impossible and impractical to (try to) protect your brand name in every country, due to usage issues and the mere matter of overwhelming costs.

However, you might find, internationally, that some countries make a business of “infringing” on well-known brand names, i.e.; they will use your brand name in an attempt to capitalize on your established trademark….they do this by registering your brand name in their country and claiming it as their own.

The failure on your part to manage these infringers will create a “likelihood of confusion” within the market place, which means that you might find your brand name already owned by others when you go to register it yourself. 

The cost to file an opposition to a pending trademark is less than the cost to file a cancellation against an already registered trademark.  Once the trademark is registered, it is much stronger and therefore harder to fight.

Not ALL trademark similarities are due to intentional infringers.  I have seen more than one case of similar (or identical names) just due to circumstance.  Your family name registered in the EU, which is identical to a brand in South Africa.  Two wineries, both with legitimate claims to the identical name, but only one can occupy trademark space, in the eyes of the trademark offices.  There are ways, however, to meet this challenge head on, whereby both parties can have legal rights to the same name with similar products.

Trademark Watching, the policing of your own brand, is highly recommended as an efficient and cost effective way to manage and protect your brand name worldwide, without the high cost of maintaining a registration in every country where you are currently or maybe soon to be doing business.

World Wide Famous, and the strength that it provides internationally, can be achieved through consistency in filing trademarks worldwide.

Trademark filing seems simple on the surface, and indeed for a brand that will never expand outside its own country’s borders, it can be very simple. However, for any brand that dreams of future international growth, the first trademark registration becomes the basis for all future international registrations and can determine the strength of your brand worldwide.

From the first filing, which should be in your home country, all future trademark registrations must consistently maintain the salient details of the originally registered trademark.

There are only a few key elements to trademark registration in most countries around the world:

  • The Owner
  • The Product
  • The Trademark (words only, stylized lettering or a design)
  • The Date of First Use (only in some countries)
Ownership of the trademark is probably the most important.

If Company A registers a trademark in 2006 in Country A, but registers the same trademark in Country B, under Company B, then no World Wide Famous rights have been established because there are two different owners. In most countries, there would be no shared trademark rights, not even if a relationship can be proven to exist between the two companies.

In the above scenario of two different owners for the same trademark in two different countries, a trademark assignment (transfer) of ownership will probably be necessary, which of course increases your trademark’s costs. And while a trademark assignment transfers the rights, that trademark might never have the full strength it would have had if filed consistently from the beginning.

Every brand and every company has unique goals and requires a unique strategy.   The above is meant only to be general information and may not apply to your brand needs or to every country.

With a simple answer. No. In lack of a clear cut reason to file WITH logo, then word/logo trademarks should be filed as words only.

Unless the logo is going to be used alone (without words) to represent the brand, like the Pierre Jouet flowers or the Dom Perignon shield, then words only make more sense long term because the odds are that your logo will change.

It is very common for a word/logo combination trademark registration to find itself 3/5/10 years later (at renewal time) using a different version of the word/logo combo.

In most countries, failure to use the trademark exactly as it was registered makes that trademark vulnerable to cancellation. What this means is, that if you register your wine trademark with a logo, then you need to use that logo in your labels and advertising always and forever. To not use the exact same word/logo combination, is to weaken your trademark.

In USA, for example, your renewal will be rejected if your wine label shows these differences:

The words are now in Calibri font instead of Arial

The words are now underneath the logo instead of above

The farm now has a lake.

An amendment or possibly even new filing would be required, increasing your long term trademark maintenance costs.

Stylized letters, such as a unique font/color of words only should never be filed. If your trademark is words only, why lock yourself into a single font/size/format/color ?

In most countries, the strength of the filing of a word/logo combination is primarily on the word portion. There are occasions, however, in some countries, when the word/logo combination can be used in a strategy to differentiate your trademark from something similar already in the trademark process.

When budget allows, the best strategy is to file 2 trademarks:

1)      words only with no specified color/size/font/format

2)      then file the logo separately

This strategy protects your accumulated rights on the word portion of your trademark (your brand name). If your logo does change, you only have to re-file the logo portion at renewal time, and your word portion grows stronger with each passing year.

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.