Intellectual property rights are territorial, meaning they only protect you in the country of registration. If you operate internationally, you’ll need to consider securing protection in several countries. While there is no global system of intellectual property registration, protecting your assets abroad should not be a daunting prospect.
In this guide, our intellectual property solicitors discuss why you need to protect your intellectual property abroad and the challenges you may face. We explain the steps involved in devising an effective international intellectual property protection strategy and how to manage your portfolio to retain protection.
Contents:
- Why is it important to protect intellectual property abroad?
- What are some challenges of protecting intellectual property abroad?
- How do you protect your intellectual property rights abroad?
- Do you need to register your intellectual property in every country where you operate?
- How do you manage a global intellectual property portfolio?
- Summary
Why is it important to protect intellectual property abroad?
Businesses often own more intellectual property than they realise. Just some of your business’s key assets that constitute intellectual property and may be capable of protection include:
- Its name and logo.
- Its branding.
- Its product design.
- Its packaging
- Its website.
Unless you intend to limit your commercial operations to the UK, you need to consider protecting your intellectual property abroad. This includes if you have plans to open sites in other countries, export your products, or sell your products online.
Securing intellectual property protection in all countries you operate in or plan to expand into means you can:
Use your intellectual property
If you don’t register your intellectual property in all relevant countries, there are no guarantees that you’ll be able to use it there.
If someone registers your brand name as a trade mark in a country you wish to expand into before you launch, you may be unable to register your name as a trade mark there. Worse still, trading under your name in that territory may constitute trade mark infringement. You would then have to rebrand or seek the rights owner’s agreement to you using your business name.
Prevent others from using your intellectual property without consent
If you enjoy success in the UK under a particular brand name and someone else begins using that brand name in another country, your ability to prevent them from doing so is extremely limited.
Monetise your assets
There are several ways in which a business can expand internationally. For example, licencing and franchising are both extremely popular options for brands entering foreign markets.
While there are differences between these two expansion strategies, they both rely on the business having comprehensive intellectual property protection in the target country since that intellectual property will form the basis of the licensing or franchising agreement. You will allow your chosen partner to use your intellectual property in exchange for a fee.
What are some challenges of protecting intellectual property abroad?
While the primary purpose of registering your intellectual property is the same throughout the world, namely, to protect your brand, the differences in each country’s system are such that navigating them successfully requires experience in the nuances of each.
Some of the challenges inherent in protecting intellectual property abroad include:
Language barriers
While you can register European trade marks in English, you may need to register some marks in the language of the particular country. Ensuring your mark and application are translated correctly is essential since any inaccuracies can cause your application to be delayed or even rejected. If you don’t fully understand the applicable trade mark system, your mark may not provide the protection you were hoping for, even if it proceeds to registration.
Take China as an example. Registering an English mark in China does not give you any protection over the Chinese version. Nearly every brand registers its marks in both English and Chinese. Given that your target market will speak and write in Chinese, registering a Chinese version of your mark encourages consumer engagement. There are several ways to translate an English word into Chinese, and you should select the one that conveys the brand ethos you wish to nurture. This involves considering not only the meaning of your translation but also how it looks and sounds.
Cultural issues
A trade mark that gains registration in the UK may be rejected in other countries. For example, you may face issues with trade mark registration in the Middle East if your proposed mark could be deemed explicit. You must ensure that your branding does not inadvertently offend the local market and make any adaptions necessary to give it the best chance of achieving registration.
Diverse legal frameworks
Trade mark law and practice varies between different countries. Before you can prepare your trade mark application, you must understand what can be registered and the nature and extent of protection you’ll receive.
For example, while China uses an international trade mark classification system to divide goods and services into different classes, it interprets the system in a unique way. It divides each class into several subclasses, primarily to streamline the registration system to accommodate the high volume of applications it receives each year. The upshot is that simply choosing the class applicable to the goods you require protection for, as you would in the UK, does not guarantee you protection in all subclasses in China.
How do you protect your intellectual property rights abroad?
International intellectual property rights are governed by a patchwork of national laws, international treaties, and agreements. Devising an effective intellectual property protection strategy requires an understanding of the complex legal landscape and how it applies to the assets you need to protect.
Some key considerations when devising your international intellectual property protection strategy include:
What rights do you need to protect?
You should begin by identifying which assets you want to protect. At the very least, these will likely include your name and core branding.
The term ‘intellectual property’ refers to a package of connected but distinct rights, including trademarks, copyright, and design rights. Some rights, such as copyright, arise automatically in most countries. Others, like trade marks, must be registered.
Some assets might be protected by several intellectual property rights in different ways. For example, your business logo might be protected by copyright as an artistic work and a trade mark as a badge of origin denoting that the goods derive from your organisation. In the case of your logo, you would rely on both registered and unregistered rights for protection.
What registration route should you choose?
Once you’ve determined which assets need protection through registrations, you’ll need to devise a strategy that secures those rights within your allocated budget. We’ll take trade mark registrations as an example, since they are applicable to all businesses.
You have two options when developing an international trade mark portfolio. You can file on a country-by-country basis or use an international system, such as the Madrid Protocol. The Madrid Protocol enables applicants to register trade marks in up to 131 countries simultaneously. In practice, most businesses opt for a hybrid approach.
What are the advantages of the Madrid Protocol?
The Madrid Protocol offers several distinct advantages to brands wishing to secure trade mark protection across numerous territories. They include:
Wide coverage
131 countries are currently members of the Madrid Protocol, including virtually all the EU as well as China, Japan, and the United States.
Cost
Using the Madrid Protocol can save significant costs. Applicants pay one filing fee covering all territories and there is no need to hire individual trade marks agents in each country unless you need advice on discrete issues of local trade mark law, or problems arise.
Centralised trade mark portfolio
Using the Madrid System means your trade mark registrations are held in one convenient online location, from which you or your legal representative can keep on top of key dates, such as renewals.
What are the disadvantages of the Madrid Protocol?
The Madrid Protocol significantly simplifies securing international intellectual property protection, but it has some drawbacks. They include:
Not all countries are members
While the members of the Madrid Protocol represent over 80% of the world’s trade, not all countries are members. If you require protection in non-member jurisdictions, such as South Africa, you’ll need to make a national trade mark application.
Registration is not guaranteed
Before you can make an application using the Madrid Protocol, the trade mark must be registered in your home country. The fact that your mark has been accepted in the UK does not guarantee that it will be accepted elsewhere. Each country operates under its own laws, and your application will be reviewed by each country’s trade mark office before being accepted.
The process can be lengthy
UK trade mark registrations usually take around 3-4 months to complete. By contrast, applications under the Madrid Protocol can take considerably longer, since each country has between 12 and 18 months to process the documentation and make a decision.
When should you register your rights?
When you’ve identified the assets you intend to register, you should generally proceed as soon as possible. The longer you wait, the more chance of someone else getting in first and preventing you from securing the registrations.
If you file an application under the Madrid Protocol within 6 months of filing your UK application, your international application will be treated as having been filed at the same time as your UK one. Once registered, your mark will be protected from the date of application. Securing an earlier date can provide invaluable protection if a third party applies to register the same or a similar mark in a foreign country before you do.
Having said that, there may be some situations in which you wish to ‘test’ your asset before embarking on the registration process. Say, for example, you have developed a new product design. You might want to gauge the public’s reaction to that design to assess whether it is worth seeking a design registration to protect it. A key requirement for registered design protection is that the design was novel at the time of filing. By showing the design to the public, you risk defeating your claims of novelty. To allow for this, the law permits designers a ‘grace period’ within which they can disclose a design to the public without affecting a subsequent design application in certain circumstances. In the UK, the grace period is 12 months, meaning you have 12 months from when you disclose the design to make your application. Crucially, different countries operate different grace periods, with some, like China, not allowing a grace period at all. If you intend to test your design with the public before applying for a design registration, familiarising yourself with the laws of the relevant countries is essential.
What level of protection will you obtain?
The scope and enforcement of intellectual property rights are subject to national law and procedure. While you may enjoy the same type of protection across several countries, the extent of that protection may vary.
Take, for example, copyright. Most (but not all) countries, including the UK, are members of at least one international convention relating to copyright protection. As a result, copyright created by UK nationals or residents will benefit from protection in other member countries, provided the material falls within the scope of the convention. The level of protection depends on the laws of each country and can vary.
For example, there is some disparity between how the UK and EU Courts approach copyright. In the UK, the Courts have traditionally only granted copyright protection to works belonging to specific categories. The EU, on the other hand, adopts a more flexible approach, usually opting to protect any type of work that exhibits the necessary originality.
Do you need to register your intellectual property in every country where you operate?
Since intellectual property rights are territorial, you’ll ideally register your rights in every country you operate in. Few businesses can afford to adopt such a broad-brush approach, so they need to devise a strategy that achieves the broadest possible international protection at the lowest cost.
You should align your intellectual property protection strategy with your core business, focusing on protecting those assets that are integral to your operations rather than niche offerings and prioritising key jurisdictions over less important markets.
When deciding what to register and where, consider the following factors:
- Do you actively use all your intellectual property? For example, if you have UK trade marks that are no longer important to your business, you may not need to register those marks in other jurisdictions.
- What are your key markets? You should prioritise protecting your intellectual property in countries of strategic importance to your business and expansion plans.
- What are your key assets? If you need to choose between which assets to protect, you should prioritise those that are crucial to your business, such as your name and logo.
How do you manage a global intellectual property portfolio?
Registering your intellectual property is only the first step. To ensure your protection remains intact, you must actively manage your portfolio. This includes renewing your rights as and when necessary and pursuing any infringements.
For example, trade mark registrations in most countries last for an initial period of ten years, after which they must be renewed. Most countries operate a grace period within which you can restore the trade mark after the renewal date for a fee.
If you do not renew your trade mark by the end of the applicable grace period, your protection will lapse. Restoring your trade mark to the register after this time is complex and costly and risks a third party registering something similar to your mark in the interim. The importance of meeting renewal deadlines cannot be overstated.
Most businesses outsource their portfolio management to specialist intellectual property solicitors like ours. Our intellectual property solicitors combine their extensive legal knowledge with innovative software to effectively manage our clients’ global intellectual property portfolios. Not only do these systems ensure no key dates are missed, but they can also alert our solicitors to any events that might impact the intellectual property, such as a competitor applying for a trade mark too similar to our client’s.
Summary
In today’s global market, an effective international intellectual property portfolio is vital to ensuring your business’s successful expansion into key markets. International intellectual property law is complex. While most countries offer similar intellectual property rights and protection, the registration and enforcement of those rights can differ significantly. Businesses expanding into unknown territories must ensure they are aware of how any nuances in a country’s language and culture might affect their branding plans.
Our intellectual property solicitors are experts in this niche area and will work closely with you to formulate a strategy that protects your assets, gives you a competitive edge, and maximises your profits within the confines of your budget.
