Securing trademarks in foreign countries

The globalisation of the world economy and the ever expanding market for goods and services bearing western brands has meant that trademark protection abroad is of increasing importance.

In many cases the overseas penetration of foreign markets means that an effective strategy of trademark and brand protection will need to be adopted.

Once a decision has been taken to adopt a mark, consideration should be given as to whether it has particular meanings in certain countries. One of the first factors to consider is the meaning of different words in various languages. The classic story is of the adoption by General Motors of the brand for its cars Nova. ‘Nova’ in English means ‘new’ or even ‘star’. However, in Spanish ‘No va’ has the meaning ‘does not go’ – not a great brand for a car. More recently, an Indian car manufacturer looked to making a trademark application for the brand ‘Reva’ in Europe. In English, ‘Reva’ cannot be faulted. However, in Finnish, ‘Reva’ is a rude word for a woman’s genitals.

Once a sign, or perhaps several alternatives, has been selected, international searches should be instructed. The purpose of the searches is to determine if a particular word or sign is capable of acting as a trademark in various countries and to assess if another company has adopted the same or similar sign or word.

Trademark owners should contemplate making overseas applications in any countries into which they believe they will expand. Most countries do not require the owner to prove they have used a mark or even to claim that they have the intention of using a mark in that country. Countries such as the USA require an applicant to prove that the mark has been used in the USA before the USPTO will issue a registration certificate.

The real advantage of registration is that ‘copycat’ registrations made by unscrupulous third party pirates, who register marks with the intention of locking out brand owners of certain markets, will be frustrated. Examples of such pirates are registrations for ‘Pizza Hot’ and ‘Sheraton Hotels’ made by third parties unconnected with the brand owners in Cambodia, who intended on blackmailing the real owners when the latter wanted to expand into that country.

Foreign applications take various lengths of time to mature to registration. Applications in the USA and many countries in the Middle East take 12-18 months to mature to registration. That said, the registration process can take three years in Italy! Once registered, most countries allow a first registration period of 10 years, which can be renewed at the discretion of the owner.

There are trademarks that are relatively inexpensive to obtain but in other countries, such as Saudi Arabia, the charge for registration of a trademark should be budgeted for in advance. It is not cheap! Obtaining registration for a trademark in various countries requires best advice. We have been registering trademarks and brands all around the world for many years. If you want to embark on global expansion for your brand call Bernard Whyatt at Brand Protect for no nonsense advice on brand protection in this country and many others around the world.

Written by Bernard Whyatt