Your client's trademark assets may be the most valuable assets their business owns. As source and quality indicators, trademarks are integrally identified with the client. The continued increase in goodwill and customer recognition of these marks and the quality they signify in the marketplace is critical to increased sales of products and services.
As your clients' businesses grow internationally, as sales expand beyond current market boundaries, and as manufacturing venues change, your clients need to be mindful of where they are using their brands and how to best protect them in an ever-evolving global marketplace.
Trademark laws are jurisdictional and vary from country to country throughout the world. Common law rights based on actual use of marks are recognized under British-based legal systems, such as in the United Kingdom, the United States and Canada. However, a majority of jurisdictions around the world have civil law systems.
Elisabeth Townsend Bridge, Nebraska 1981, is a partner with SmithAmundsen LLC in Milwaukee, advising clients about patent, trademark, and copyright prosecution, licensing, and enforcement matters for more than 35 years.
Under a civil law system, trademark rights, at least initially, are based on registration, not use. In those jurisdictions, the ability to both use and enforce your rights in the mark depends upon whether you are first to file for registration of the mark in that jurisdiction. Consequently, it is important to register your brands early on so that you are in a position to sell product under your marks and enforce your trademark rights against infringers in those jurisdictions.
Because of the global nature of today's economy, a majority of companies are both selling and manufacturing products, or providing services in multiple countries. Consequently, it is important for every brand owner to understand the necessity of protecting its marks in all jurisdictions where it is using the mark.
As a business grows internationally and sales expand into new countries, and as manufacturing venues change, we need to be mindful both of where the critical company brands are currently used and where they are likely to be used in the future. This “use” includes the jurisdictions where services are advertised and provided under the marks and where goods are labeled, shipped and sold bearing the mark. A regular audit of your client's trademark portfolio and how that intersects with its manufacturing, sales, and marketing strategies will help keep the client ahead of the game in an increasingly competitive economy.
Conduct Periodic Reviews
Periodically, it is helpful to review with your client the current status of its business in the following respects to evaluate whether or not your client's brands are properly protected in the appropriate jurisdictions.
Ask your client to review the following questions from a global perspective:
- Where are your products currently manufactured?
- Where are your products or services currently sold?
- Where are your products labeled or services advertised under the mark?
- Who affixes the labels to products and where?
- Are license or distribution agreements in place as needed addressing the ownership of the marks and quality control issues?
- Where are your advertising materials prepared and distributed?
- What are your market goals for further business expansion?
Also be aware that there are several strategies for protecting brands internationally. Certainly, this includes direct filing through foreign associates. However, international trademark applications, assuming a U.S. “home country” application has been filed by the client, can also be filed through the U.S. Patent and Trademark Office in the form of a Madrid Protocol Application, where up to 96 additional jurisdictions can be designated. It is also possible to file an EUIPO (European) application to cover all 28 member countries of the European Union in a single filing. Generally, both procedures result in substantial cost savings over direct filing in each country through foreign associates.
Conducting regular trademark audits will help define the client’s trademark strategies and current and future needs. In a global marketplace, your clients need to be sure that they can bring their valuable brands into newly expanded markets and can protect their brands and goodwill against infringers wherever they do business.