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The Importance of Registering Your Trademark in Foreign Countries




by:
Alan M. Kindred
Leech Tishman - Los Angeles Office

 
April 29, 2014

Clients that are currently manufacturing a product in a foreign country, or that have an intention to manufacture or sell products to consumers in that particular country, should strongly consider registering their trademark in that country. Trademark laws are national. That generally means that if you have your trademark registered only in the United States, it is not protected outside the United States. This is of great importance, in particular, for companies manufacturing and/or selling their products in China. Unlike the U.S., China is a first-to-file jurisdiction. No “use” of the mark in China is required in order to obtain registration there. This means that if another individual or organization registers your trademark in China (maybe even your own manufacturer, distributor or licensee), there is not much that you can do other than spend a lot of money to buy it back. An enterprising Chinese individual recently registered the trademark “iPad” in China. Apple had to pay that individual $60 million to buy it back! China has recently changed its trademark laws to mitigate such a harsh situation from reoccurring, but these new Chinese laws may not be very effective and could still result in litigation in China. Moreover, those new laws seem somewhat vague and have not been tested in the Chinese courts.

Similar trademark protection regimes - first to file, no use required to get registration - also apply in a remarkable number of other countries, including Europe!

Clients that are currently having their goods exported to the U.S., for sale in the U.S., should ensure that their trademark, if registered in the U.S., bears the ® symbol on all goods described in their Certificates of Registration. Once your trademark is registered in the foreign country, it is important to record it with the Customs authorities in that country. After the trademark is recorded, some countries, including China, will block the exportation of counterfeit or infringing goods.

Registering Your Trademark Internationally

Thankfully, clients can register their trademark in China (and India and the EU) from right here in the U.S., in U.S. currency, and in English! Clients must already have a U.S. trademark application or registration on file in order to take advantage of the international treaty that makes such applications possible. If the client has applied to register their trademark in the U.S., as long as they file in China (and other countries) within six (6) months of the U.S. filing date, they are entitled (pursuant to another international treaty), to claim priority back to the U.S. filing date.

Leech Tishman’s Intellectual Property Practice Group is experienced with assisting clients in preparing international trademark applications. The firm handles such applications for a flat fee of $1,800. Each designated country in the international application has its own filing fees, so filing fees (on top of our flat fee) will be calculated in accordance with how many countries are selected in the application. If a client wants to add on additional treaty countries at a later date, we only need to prepare a short supplement and pay the filing fees for the additional treaty countries.

Due to the fact that it may take some time to register your trademark in the foreign country, clients may want to consider blocking imports of counterfeit or infringing goods with the assistance of U.S. Customs.

To obtain assistance from U.S. Customs, clients must record their U.S. registered trademark with U.S. Customs. Leech Tishman is able to assist with this as well.

It is important to note that clients manufacturing products in China, and who may be concerned about knockoffs coming from China, should realize that there are still two escape valves despite the fact that your trademark may be registered in China. Those escape valves are Hong Kong and Macau. While these regions are part of China, they still have their own trademark offices. Due to this, clients should seriously consider registering their trademarks in Hong Kong and Macau as well. While Hong Kong and Macau (even though they are regions of China) are not included in the international trademark filing treaty mentioned above, we have associates in both regions who can file your trademarks there.



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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Author
 
Alan M. Kindred
Practice Area
 
Intellectual Property
 
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