This year World Intellectual Property Day falls on April 26th. The theme of this year’s celebration is Digital Creativity: Culture Reimagined.
Today’s technology allows us to easily cross borders that used to create significant hurdles in business. This has changed the way goods and services are created, distributed, and enjoyed throughout a now global marketplace. The ease of access to this global marketplace means today’s businesses must be ever mindful of the changing concerns and hurdles that they face. One in particular is their brand identity and how to protect it.
Trademarks are among a business’ most important assets because they serve to identify the source of goods and services to consumers. While many businesses register their trademarks with the United States Patent and Trademark Office (USPTO), not all realize that trademark rights are territorial. A registration with the USPTO does not provide any protection for their mark beyond the borders of the United States. All too often this issue becomes apparent after a problem has occurred (e.g. someone selling counterfeit products in another country) and in many instances, it’s already too late. Corrective action may still be an option, but it’s more likely the counterfeiting company now owns the mark in the other country and the original business’ only option is to attempt to “buy back” their own mark, often at an outrageous price.
In order to avoid situations like this, companies engaged in business in foreign markets should consider seeking international trademark protection. There are a number of ways to approach this, some of which are more cost effective than others. For example, the European Union Trademark (or Community Trade Mark) registration is a trademark that has been registered in all 28 member states of the European Union. This single registration, while on the expensive side, may be less costly than filing separately in the European countries in which a business wants coverage. Similarly, filing a Madrid Protocol Application allows a business to designate any of the participating member countries, which includes 97 members covering 113 countries around the world. An intellectual property attorney can help you determine what makes sense for your business.
There are also a number of options for enforcing trademarks short of filing a lawsuit, such as cease and desist practice, negotiated settlements, and recording registered trademarks with U.S. Customs and Border Protection (CBP). This assists CBP in its efforts to prevent the importation of goods that infringe registered trademarks. In fact, the U.S. government is ever mindful of the value in protecting businesses’ intellectual property and has developed the Strategy Targeting Organized Piracy (STOP) initiative to combat piracy and counterfeiting. Their efforts are to stop trade in fake products at U.S. borders and to keep counterfeit products out of the global supply chain.
As you celebrate World IP Day this year, remember that it’s important to develop a protection strategy that works best for your business. With more than 200 countries in the world today, seeking coverage in every country is likely too costly for any company, but working with an intellectual property attorney to identify target markets and prioritize where protection makes sense, can help your business smartly strategize and implement a plan that makes the most sense as you expand your business globally.