Protecting Your Business Name Can Be Much More Difficult in a Global Market
There are many factors to consider when choosing and protecting your business name. As discussed in an earlier post, trademarks are one of those factors. If you currently do or are planning to do business internationally, you need to be aware of the intellectual property laws in each country in which you plan to do business.
Registering your trademark in Country A does not automatically mean that you are protected in Country B. In fact, without further action, you probably aren’t. Likewise, you may be able to operate under a name like ABC Imports in Country A, but use of the same name in Country B could infringe on an already existing trademarked name. How do you ensure that no one infringes on your rights and that you don’t infringe on anyone else’s rights when doing business internationally? It is not easy, but due diligence and understanding the basics go a long way.
Information Provided by WIPO
WIPO, the World Intellectual Property Organization, provides one of the best comprehensive overviews of trademark law, as well as the international laws that govern them. For those that don’t know, WIPO is an agency within the UN structure with 187 member countries. It administers approximately 15 treaties and conventions related to intellectual property, which together provide minimum standards of protection, provide for consolidated registration systems, and govern the international classification systems for the countries that have signed them.
One of these treaties is the Madrid Agreement and the related Madrid Protocol. There are differences, but for simplicity, they will be discussed jointly today. The Agreement and Protocol provide a system for international trademark registration. This provides an alternative in protecting your business name in each and every country in which you are operating, which could be very expensive and time consuming. The Agreement and Protocol, which have a combined 74 member countries, allow an individual or company in a member country to apply for “international registration.”
Take Steps to Register Internationally
International registration is NOT automatic. You must first register your mark in your home country (the U.S.) if you are interested in protecting your business name. You can register it in either your name or your company’s name. There are advantages and disadvantages to both. Next, you must complete and file an application for international registration, and on it indicate which other member countries you would like to include. You can add additional countries at a later date if you expand your business.
All international applications must include a copy of the mark and a list of goods and services you seek to cover. It is notable that the list of goods and services should be classified using the International Classification of Goods and Services. For all you techies out there, the USPTO office provides electronic access to the relevant forms here.
The Madrid Agreement and Protocol are just two of the relevant treaties, and trademarks are just one area of intellectual property law that is relevant to international business owners. It is important to remember that not every country is a member of WIPO, and even those that are may not be parties to every agreement. Thus, a proper analysis of intellectual property laws is country specific.
Intellectual property is a complicated area when dealing with one country. It is even more complicated when dealing with multiple countries. Let an experienced international law attorney from Whitcomb Law, P.C. help you protect your rights.