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Protecting Trademarks in Overseas Markets
03 July 2003Simon Gray
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Protecting Trademarks in Overseas Markets
Technology Ireland, July-August 2003.
Simon Gray, a Trademark Attorney with Tomkins & Co, advises exporters on the importance of protecting their trademarks.
A trademark is an indication of the origin of goods and services. By its nature a trademark identifies the goods and services of one undertaking and distinguishes them from those of another. The use of a trademark on goods and services can establish a significant reputation and generate goodwill for a company such that the trademark itself can become a valuable asset of a company. For exporters it is important to protect this asset, as they are selling their goods outside of their home market and so are exposing their trademark to a much wider audience, thus increasing the risk of a third party copying the mark and trading on the reputation and goodwill of a company. This can be detrimental to the reputation of an exporter and also have a serious impact on turnover and profitability of a company.
The best form of protect for an exporter in foreign markets is to obtain statutory protection of a trademark through registration of the mark with the appropriate national authorities. A Trademark Registration will enable a trademark owner to prevent third parties from using the identical or similar trademark on identical or similar goods and services. Furthermore it allows an exporter to enforce their trademark rights against a distributor or agent of the exporter in a country from trying to appropriate an exporter's trademark.
There is no global trademark registration system; a trademark must be registered in each individual country, with two notable exceptions:
Community Trademark (CTM): The European Union established the CTM system, which commenced in 1996. It allows for the filing of a single application with the Community Trademark Office in Alicante, Spain, and provides protection in all 15 EU member states. This system is a simple and cost effective method of protecting a trademark in the EU, and it's benefits will be greatly enhanced as CTM registrations will automatically be extended to new member states joining the EU from 2004 onwards, increasing the scope of protection provided.
International Registration (Madrid Protocol): An Irish exporter can avail of this registration system that allows a single application for a trademark designating any number of countries that are members of the Madrid Protocol. At present there are over 50 members of the Protocol covering Europe, Eastern Europe, Asia and the Pacific region. The United States of America is also scheduled to join at the end of this year. While this system is not as simple as the CTM it is still reduces administrative burdens and is more cost efficient than applying to register a trademark on a single country by country basis.
As companies view a tangible asset, such as a physical product, as valuable, so to must companies now realise that intangible assets, namely trademarks, have value and must be protected. This is even more so for exporters who trade outside of their home market, it is an asset that requires protection through registration.
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