- within Privacy, Corporate/Commercial Law, Litigation and Mediation & Arbitration topic(s)
- with Senior Company Executives, HR and Finance and Tax Executives
- with readers working within the Insurance and Law Firm industries
As a company grows and expands to other markets, or intends to move its manufacturing overseas, business owners should factor in the protection of their brand in those markets.
In the process of moving manufacturing and organising logistics, supplier contracts, regulatory issues and a range of other considerations, it's easy to forget to check whether you can take your trade mark with you.
It can be easy to dismiss a trade mark as something you can consider later, especially if you don't intend to sell products in those markets, however, by doing so you risk costly trade mark and/or legal disputes that could be avoided. Taking action ahead of time can help ensure your trade mark rights are protected and can help avoid stressful and costly mistakes.
Before you make the move or want to use your trade mark in a new market, we provide a few of the key considerations to ensure you make a smooth transition.
1 Don't forget your trade mark
When you start thinking about moving manufacturing or selling your goods in a new market, check your existing trade mark protection. Do you already have your trade mark protected in the new market?
Remember to check that not only is your main brand protected, but consider:
- protect all your trade marks, including a word mark and/or a logo mark
- consider any other trade marks that may need to be protected such as product names - what is descriptive in one country may not be descriptive in another
- consider any taglines that you are using that may need to be protected.
2 Conduct trade mark searches
If you find that you don't already have protection in the new market, take steps to conduct trade mark clearance searches first to ensure the trade mark is clear for use.
Even if your products are only manufactured in the new territory and you do not intend to sell them directly in the market of manufacture, applying the mark to the product for export purposes can still constitute "use" of a trade mark under local laws and this could lead to a trade mark infringement claim.
Also consider whether your trade mark has any local meanings or connotations that may be negative or problematic in order to avoid any unintended offense.
Conducting searches and local checks will mean you are forewarned of any potential issues with your brand and could help to avoid costly disputes or even having to rebrand.
3 File your trade mark application
Once clearance searches have been done and if your trade mark is clear for use, file your trade mark application/s as soon as possible in the new jurisdiction.
If the country of interest is a member of the Madrid Protocol, this can be done by either filing an International Registration covering the new jurisdiction or adding a designation to an existing International Registration.
Alternatively, you can file a local trade mark application.
File early so that you have time for your mark to progress through the application process. The application processing time is different in each jurisdiction - for example, an application in the New Zealand will be examined within a couple of months but in other countries such as China, examination can take around 6 to 9 months.
By conducting a clearance search prior to filing, you will also know whether you can use your trade mark in the market in the meantime.
4 Consider whether you need to protect any other intellectual property
Moving manufacturing can also involve other aspects of your intellectual property including patents, designs, confidential information and trade secrets.
Consider whether you also need to extend protection of your designs and patents to the new jurisdiction. In addition, remember to use locally relevant non-disclosure agreements for any new business partners and keep know-how and trade secrets protected.
5 Monitor and enforce your rights
Don't just file and forget your trade mark. You should ensure your mark is in usein order to avoid the possibility of it being removed due to non-use. Again, even if you don't intend to sell your products in that market, export purposes can still constitute "use" of a trade mark under local laws.
In addition, you should monitor the marketplace for any infringing or counterfeit products by setting up a watching service for any applications filed that are similar to your mark. If you find something of concern, obtain advice or take appropriate action to oppose the applications of concern.
Importantly, where possible, register your trade marks with local Customs authorities in order to prevent unauthorised products using your brand from leaving or entering the country.
How we can help
If you are considering moving manufacturing to another market, or launching your brand in a new market, always remember to consider your trade mark early on. By doing so, you will know the status of your mark in the market of interest and it could help avoid costly disputes.
Our trade mark teams in Australia and Asia can help you with trade mark clearance searches and filing new applications. In addition, our teams can help with your patent and design questions. So reach out to the team for all your IP needs across the Asia Pacific region.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
