Tips for Protecting International Trademarks
If goods are marketed and sold in the United States, most manufacturers want to protect those goods and services with a trademark. When goods or services are to be sold on the international market, a trademark is just as important. Every country has its own notice laws with regard to trademarks and its own laws and methods of handling trademark disputes. An attorney can help you with these tricky issues.
Research the forms of notice required in any country where the goods or services will be marketed. For example, determine whether the TM and ® symbols from your country offer any legal protection in the target market.
Research the laws of the foreign countries so that you understand, before any trouble arises, what liabilities or penalties there may be if the goods or services are not properly trademarked under the rules for that country.
Research the history of how courts in that country have handled trademark disputes.
Research whether the country is a signatory to any treaty covering intellectual property.
Example: The World Intellectual Property Organization (WIPO) has a Trademark Law Treaty adopted in 1994. The WIPO Treaty contains detailed provisions on how trademarks must be registered, and renewed, in the participating countries. The North American Free Trade Agreement (NAFTA) and the World Trade Organization also both contain provisions dealing with intellectual property protection.
Research whether you may be able to engage in alternative dispute resolution (ADR) if a trademark issue should arise in a foreign country. ADR is often a quicker and more cost-effective way to resolve disputes than full-blown litigation.
Examples of Foreign Trademark Laws:
The TM and ® symbols are generally recognized as acceptable forms of notice in the Asia/Pacific regions and Europe. However, in South America, the ® symbol is only acceptable in Paraguay and Ecuador. Other South American countries require other forms of notice. In still other countries, there may be no specific law on what notice is acceptable. In those situations, manufacturers are left to decide what sign to use.
In some countries, you must provide more than just the TM and ® symbols. For example, in Iran, pharmaceutical products, toiletry items, and foodstuffs must bear registration symbols or marks and must also include the registration number and registration date.
Every country differs in how they deal with the failure to indicate that a mark is registered and the false indication that a trademark is registered when it is not. For example, in North America there is no sanction for failing to indicate that a trademark is registered. In several Asian countries, however, a party can face both criminal fines and imprisonment for making a false claim that a product is trademarked.