These articles, written expressly for CFA by our member attorneys, provide information about our industry's vulnerable IPR issues. The current case studies, along with their outcomes, will send a clear "protect yourself" message, and are part of CFA's continuing effort to be of assistance. 
August 2014 | ISSUE No. 3| "PROTECT YOURSELF"
Many U.S. clients who expand their businesses beyond national borders are unaware that their U.S. trademark registrations provide no protection in foreign jurisdiction.
If you are an exporter, or thinking about expanding your business outside of the United States, you should seriously consider securing protection for your trademarks at the earliest possible date in those foreign markets which are of interest.
Unlike the United States, most other countries have a "first to file" trademark protection system.  This means that the first party to file for trademark registration is accorded legal protection, even if that party has never used the trademark, and that party will have rights superior to one who has used the trademark but never registered it. The result might be that the U.S. company could be prevented from using the trademark in that country or face infringement claims were it to do so.

There are many instances of United States companies having to pay well over $100,000 just to get the rights to their own trademarks in another country. 
The safest approach is to register in each country.  The cost of registering one's trademark is far less than paying to recover a trademark registered by a "predator".  One can take advantage of one of the provisions of the intellectual property treaty known as the Paris Convention for the Protection of Industrial Property.  This ‘priority right’ provides that an applicant from one member country can use its first filing date in one of the member countries as the effective filing date in another member country. The applicant must file another application within six months from the first filing.  Exercising this option would enable a company to stretch out its intellectual property protection budget over a six-month period without jeopardizing its rights.  Most countries are members of the Convention. 
When a trademark registration is issued, it is usually valid ten years from the registration date, after which time it can be renewed for another ten year period or longer.  The registration can continue to be renewed indefinitely as long as the mark is still in use in connection with the registered merchandise.
Once the trademark is obtained, it is prudent to protect against infringements by subscribing to a trademark monitoring service, which will alert the user to official filings of the identical or confusingly similar trademarks in the countries of interest.  ‘Cease and desist’ letters may then be sent to the applicants, demanding that they abandon their applications and/or cease all use of the infringing trademark.  This can be an effective tool, since many of these infringers do not want to go to court and will accept the terms of the ‘cease and desist’ letter without further action.
Trademark owners should also record trademark ownership documents with Custom authorities.  In many countries, Customs Bureaus have the power to conduct investigations and seize merchandise which is suspected of being counterfeit.

EVAN KENT Partner, with over 30 years of experience in intellectual property law with emphasis on trademark prosecution, protection and licensing, both domestic and international.

CONTACT: (310)-312-3111 | ​