As a Trade Mark Attorney, I'm often asked to file trade mark applications or update the ownership of existing rights in foreign jurisdictions. This could be because the client is moving into a new market, perhaps they have acquired or merged with another company, or perhaps they are completely rebranding. This has been a part of my job for more than fifteen years, and on looking back over this time, I realised that I have dealt with many quirks of overseas trade mark systems, which often aren't commonly known.
There are currently 195 countries recognised by the UN, but there are additional territories when it comes to trade mark law, for example:
- The Republic of China (Taiwan) is not included in the "official" list as the UN considers it represented by the People's Republic of China, but Taiwan has its own trade mark system;
- In order to protect your trade mark across the whole of Tanzania, it is necessary to file separately in the territories of Tanganyika and Zanzibar;
- Separate applications are required in Iraq and Northern Iraq (Kurdistan) for the same reason;
- Jersey, Guernsey and Montserrat also operate their own registries, separate to the UK.
My list of potential territories therefore stands at 201 – although there may be more that I am not aware of. Of these, I have filed or overseen trade mark applications and/or recordal applications covering 169 territories. I'll admit there are a handful of places that I'm not 100% sure I have filed in, so I haven't counted them.
When you've spent so many years filing trade mark applications in such a diverse range of territories, you build an understanding of local requirements, and also the differences in practice. This is useful when you are working to a deadline, for example for claiming priority in a large filing project; certain countries require original supporting documentation at the time of filing, meaning preparation in advance is needed.
Having a strong grasp of these varying requirements enables me to advise my clients as comprehensively as possible at the outset, and to manage expectations as to what can be achieved in a given timeframe. It also allows me to advise clients based upon potential obstacles that their applications could face, allowing us to form an appropriate strategy which ensures the best possible scope of protection for their brands, whilst navigating the complexities of local laws. Did you know for example, that:
- In Mexico, it is necessary to submit a declaration of use three years after a mark is registered, whilst in the Philippines this must be done three years from filing an application, even if the application is still pending;
- The Russian and Thai registries do not consider acronyms to be distinctive, whilst in Russia and Cuba any mark which consists entirely of foreign language characters will be refused, on the basis that they cannot function as a trade mark because local consumers will not understand them;
- Countries including the United States and Thailand have strict laws relating to CBD products, and this can restrict your ability to cover these goods under an application. In Thailand, any application covering these goods will be refused outright, whilst the USPTO will only accept such an application if it complies with specific requirements;
- It is not possible to file applications covering alcoholic beverages in classes 32 or 33 in a number of countries, including Yemen, Kuwait and Qatar, whilst in Kuwait, pork meat can also not be covered in class 29;
- Political tensions also have an impact – for example, the Iranian Registry will not accept an assignment if the documentation provided includes applications or registrations in Israel.
In many of the above cases, a client is unlikely to know when filing an application that these grounds for refusal exist, and so significant costs can be saved (and potentially redirected toward better-targeted filings) by looking ahead at potential obstacles beyond those relating to filing requirements.
There are also territories where unusual scenarios apply when it comes to enforcement of rights. Whilst the Holy See (Vatican City) is considered an independent country, it is not possible to register a trade mark there, however, an Italian national or EU registration may nevertheless be enforceable. Meanwhile, under the Andean Pact, an application or registration held in Bolivia, Colombia, Ecuador or Peru could provide a basis for opposition in any of the other countries.
As you can see from the above, the considerations surrounding an international trade mark filing strategy extend beyond the immediate documentary requirements to file an application, and so it pays to ensure that you have as much information available at the outset as possible. I would always recommend working with a Trade Mark Attorney to avoid these issues, and of course, if you're interested in filing an application in Vanuatu, Nauru or somewhere else slightly obscure, please give me a call, as I'd like to learn more about their trade mark systems, and add them to my list!
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.
