This is a way to “police” your own trademark, especially in countries where you do not yet have formal trademark protection in place (i.e. trademark registration).
A situation we see often is when you only make a (couple of) small shipment(s) into a country…then your customer/distributor/agent in that country will often register your trademark with themselves as owner (not you) before you have a sales plan in place, which would include a formal trademark registration.
Then, months or years in the future, once you have determined your market is strong enough in that country, you do a search (or worse, you don’t do a search) only to discover that your agent owns your brand name, and you have to take additional steps to get it back from an entity which may or may not still be friendly to you. At best you must do an assignment, at worst, you must litigate to get back your own brand name.
Worldwide Famous basis can be used to win a variety of arguments:
The above are the four most common “litigation situations” in which the Worldwide Famous arguments might be effectively argued in many countries (some countries support worldwide famous arguments more than others).
Your ability to use the Worldwide Famous arguments will depend on:
--the consistency of ownership (every single mark has to be owned by the same entity).
--the consistency of the goods listing.
--the sheer number of countries in which your brand already has trademark registration.
--the dates of registration in each country…the older the better in terms of Worldwide Famous Trademark strength.
Worldwide Trademark Watching will check all the Trademark Gazettes published anywhere in the world and is a good alternative to having your own registration in each country, which most businesses find to be cost prohibitive. Having a strong Worldwide Famous Trademark will help you win when litigation is necessary. Opposition litigation on a trademark application is much less expensive and easier to win than cancellation litigation on a trademark registration.