Protecting trade marks overseas

Jaya Mandelia and Namrita Kochhar of Indian Law Firm, Singh & Singh, have recently written an article, which can be found here, highlighting the problems being faced by brand owners whose marks are known but not yet registered overseas.

The increase in on-line retailing and advertising has resulted in brands gaining international exposure.  Trade mark squatters can take advantage of this by identifying brands and obtaining registrations in countries where the marks have not been used or registered by the true brand owners.

Article 6bis of the Paris Convention and Article 16 of the TRIPS agreement provide protection for well-known and famous marks.  These provisions provide that if a mark has sufficient reputation and international use it may be afforded protection in a country where it has not been used or registered.  The degree of protection provided by well-known marks depends on the country concerned.

Trade mark owners also face the problem that trade mark rights are territorial.  Each country has separate rules and regulations.  In some countries, such as in India, a common law regime is followed whereby the first to use a mark has the superior rights.  However, a number of countries, including China, operate of a first to file regime where use of the mark is not recognised and only a registration will give enforceable rights.

If a trade mark squatter achieves a registration before the true brand owner this could leave the brand owner in a difficult position, depending on the country concerned. Often, the trade mark owner will be left in a position where the only option is to either buy the registered trade mark from the squatter or to start expensive and time consuming litigation.

Many brand owners have fallen victim to trade mark squatters, including famous marks such as Starbucks, Apple, McDonalds and Burger King.   It is obviously even more difficult for smaller trade mark owners who may have used the mark overseas but are not yet well known.

In the UK and US, anyone filing a trade mark application is required to sign a declaration that they are using the mark or have a bona fide intention to use the mark.  In some countries, including China, this type of declaration is not required.

Jaya Mandelia and Namrita Kochhar are calling for all trade mark offices to investigate the real and intended use of a mark to prevent a new application being filed by anyone other than the real trademark owner.

In the meantime, trade mark owners who are using their marks overseas should prioritise registering in countries such as China who operate on a first to file basis.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.