Companies often neglect to consider how important it is to protect their intellectual property overseas. Even some of those business-savvy industry giants mistakenly overlook this critical aspect of brand growth and protection. Apple and New Balance have been two of the world famous players that have been subject to accusations of infringement and other lawsuits. Check out these articles:
Apple’s iPad trademark dispute in China
Court upholds infringement suit against New Balance
Unlike the US, many foreign countries do not require that the owner of a trademark actually use the mark, so it is at times possible for anyone to apply for and register a mark and then bar the rightful owner from using it as illustrated in the cases cited above.
So, while you may not be selling or using your product or service in a foreign country now, it may be smart and important to obtain IP protection in some other countries depending on the type of product or service you offer, or based on your potential plans for the brand in the future in a foreign country. Foreign trademarks are also particularly important when you are manufacturing your products in a foreign country. Having a trademark in a foreign country allows you to produce the item there and then export it without the fear that another may obtain a local trademark registration and bar you from exporting the product. Not only that, they may be able to prevent the manufacturer from producing it.
To that end, there are various ways to seek extension of protection of your US trademark to other countries. One way is via the USPTO through the Madrid Protocol. This method enables you to handle a foreign application in member countries without the need of a foreign attorney.
As with trademarks, patents should be considered in your foreign and overall IP plan if you hold one in the US. In most countries a US patent may act as prior art and bar another from obtaining a patent in a foreign country, but it will not provide you protection in those foreign countries. Obtaining a patent in a foreign country will allow you to stop the infringement at the source before it makes its way to the US or any of your other markets.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
Law Office of Jason H. Rosenblum, PLLC © 2016 All rights reserved.