Registering a trademark across multiple jurisdictions can be a complex process. Brand owners must strike a balance between maximizing protection across their jurisdictions of interest and managing both risks and costs to develop a cost-effective and commercially sound filing strategy.
This article explores three essential steps for developing an effective global trademark filing strategy: determining key parameters of your trademark applications based on your commercial priorities, conducting trademark clearance searches to identify potential risks and considering regional and multinational filing systems to streamline administrative processes and reduce costs.
Watch our webinar "Developing a sound global trademark filing strategy: key considerations and best practices" for more insights.
1. Determining key parameters
Assessing the scope of your current business activities and future growth plans is the first step in developing a global trademark filing strategy. This step ensures that your strategy aligns with your overall business objectives and helps to determine the key parameters of your trademark applications, including the goods and services of interest, and the jurisdictions in which to file your applications.
Consider the following questions:
- Key trademarks: is the trademark of interest a word, a design or both? Will translations or transliterations of the mark be used in certain jurisdictions? Will the mark be used in certain colours, styles or typefaces?
- Key jurisdictions: in which countries are you currently using the mark (either directly or indirectly, through licensees), what are the specific markets targeted for future expansion? Does the commercial value of each market justify the expense of a trademark application?
- Key goods and services: what are the goods and services of interest? Will you provide the same goods and services across all markets? Or will you offer only certain goods and services in certain markets?
2. Conducting trademark clearance searches
Adopting and using a trademark that is identical or confusingly similar to that of another entity can expose a business to significant liability. Conducting trademark clearance searches at an early stage is an essential step in developing a global trademark filing strategy that adequately protects your business interests. These searches afford brand owners a snapshot of the local market and register to identify third parties that may pose potential risks to the registration and/or use of the trademark of interest.
Conducting clearance searches can also help brand owners evaluate the likelihood of registering their marks, and allows them to anticipate and mitigate potentially costly obstacles during prosecution, including objections from local trademark offices and oppositions from third parties.
While an ideal strategy would necessarily involve comprehensive clearance searches in every jurisdiction of interest, budgetary constraints and practical considerations often dictate the scale and scope of the searches. Such considerations may include a company’s risk tolerance, its willingness and ability to adapt if issues arise during commercialization, the costs of searching in a particular jurisdiction, and the commercial value of the trademark to the company and the jurisdiction. In addition, jurisdiction-specific factors (e.g., recognition of common law rights, the rights, if any conferred upon filing, etc.) should be considered.
3. Taking advantage of multinational filing systems
Once you have determined your key parameters and conducted your clearance searches, consider whether to file distinct national applications in each jurisdiction of interest, or to rely on regional or multinational filing systems.
Consider the following three filing options:
- National: filing a national application in each jurisdiction of interest is typically the fastest way to registration, but it is often the costliest, as it invariably requires the services of local counsel. It also offers the greatest flexibility, as each national application may be tailored to the applicant’s business objectives in each individual jurisdiction.
- Regional: regional systems provide protection in multiple countries within one application (e.g., African Intellectual Property Organization; Benelux; European Union). However, if your application is opposed, or your registration is invalidated, your rights in the mark may be jeopardized in all the countries of the region.
- Madrid: the Madrid system is a centralized, multinational filing system administered by the World Intellectual Property Organization. It offers a cost-effective alternative to filing national or regional applications with intellectual property offices around the world, avoiding the need to retain local counsel (unless obstacles arise during prosecution) and reducing administrative burdens. It provides less flexibility to tailor each filing to each individual jurisdiction, as an international registration must reflect a so-called home application, or the registration on which it is based. In addition, fees for filing an international application are not insignificant, such that a Madrid filing is best suited for brand owners who require protection in five or more foreign member countries.
Conclusion
A cost-effective and commercially sound filing strategy can simplify the trademark application process across multiple jurisdictions, helping you and your company to optimize its trademark protection while effectively managing costs and mitigating potential risks.
Taking the time to assess your commercial priorities and determine key parameters at the outset is critical to aligning your business and legal interests. Conducting thorough clearance searches can help assess the likelihood of successful registration in each jurisdiction while identifying potential risks, allowing you to adjust your strategy as necessary. Evaluating the benefits and drawbacks of various filing systems can streamline the application process.
Brand owners would be well advised to seek out the strategic advice of experienced trademark counsel before deciding how and where to protect their brands around the world.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.