In an increasingly globalised world, most business owners will be familiar with the prospect of planning an export strategy for their particular product or service. As part of this, it would be wise to consider Intellectual Property in and amongst the myriad matters to be addressed.
M&D will spend some time in the coming months addressing the matter of export markets and how you can best protect your Intellectual Property as you consider your export strategy, in trade marks, designs and patents.
Today we will consider the question of trade marks.
Export markets and protecting your trade marks
When looking to export your goods or provide your services in other countries there are a number of matters which you need to consider not least of which is Intellectual Property.
Can I use my trade mark in the export country?
One question to ask is whether your use of any of your trade marks, those signs you use to distinguish your goods or services from those of others, would infringe a third parties’ rights in that territory? Just because you have rights to a trade mark in your home country, does not mean that you have the right to use a trade mark in another.
Protecting my trade mark
Once you have established that use of your trade mark would not infringe a third parties’ trade mark rights by having a clearance search conducted, it would be prudent to secure the trade mark for your self by filing a trade mark registration. In the UK and Ireland use of a trade mark may allow you to accrue certain rights to a trade mark but in other countries it is the first to file an application for a registration who secures the rights in the mark.
Routes to protection
Depending on where you require protection, there are three main routes to protection which could be taken to secure trade mark protection internationally: –
- individual national applications in each country;
- if you plan to use your trade mark within multiple countries in a particular region, you may be able to file a single application to cover that region; or
- an international application based upon a home registration and designate the countries of interest which are party to the Madrid Protocol.
For many applicants, a mixture of all of the above may be most beneficial. In our next article we will look at each of these routes in more detail.
Should you have any questions regarding the use of your Intellectual Property abroad, please do not hesitate to contact us at email@example.com or firstname.lastname@example.org