What is a good global strategy for trademark protection and how much does it cost?

Question

We are looking to register trademarks in foreign countries, as we establish more international presence abroad. What is a good global strategy for trademark protection? Is there a good approach to determining which countries should we register? What would be the approximate costs?

We are a small company operating out of Tokyo. We develop software solutions that create top-speed, highly efficient software interfaces between smartphones and IoT Devices.

Answers: 2 public & 2 private

1ahb sh ws thumb  fnl pic
Lawyer

I agree with Mr. Mincov; his advice is sound and stated quite well. I would also add to his advice that you should consider where your trademark is most likely to be infringed either because there is a lot of infringement in that country or because infringing is easy. For example, countries like China, Russia and Brazil have a bad reputation for marks getting hijacked, like Mr. Mincov described, and in those countries a large part of what makes that possible is that the first to file often gets the rights, not whomever has the use and reputation. So you need to anticipate which countries like that you will be operating in and file right away even if you have no use of the mark (i.e. not doing business) in that country yet. Those countries usually don't require use of the mark to obtain the registration. In other words, the "importance" of a country can be measured not only positively in how much commercial success it likely brings you, but also negatively as in which country could have the greatest cost to you if you lose your rights in your mark.
One of the most costly aspects of protecting your mark around the world is that trademark protection is territorial so you will need to file applications in each country in which you want protection and probably a trademark attorney in each of those countries as well. Most trademark attorneys maintain an network of international associates so if you consulted with a Japanese trademark attorney, he/she likely has associates in around the world to get you into whichever country you need.
Good luck.

Ruslan karadzhov
Trademark Agent

The important thing is for you to determine which markets will bring a substantial part of your revenues.

It does not matter how big you are or where you're from. If your biggest market is Angola, you need a trademark in Angola.

If you realize that, for the sake of example, most of your revenues will come from clients in Canada and the U.S., you should trademark your brand there.

Lastly, it's important to think as to the importance of each markets AFTER you've accomplished your business goals. For example, if you have no sales in Canada today, but plan that they will be substantial in the future, trademark the brand as early as possible.

It's a lot cheaper to trademark a brand that no one knows than fight over a brand that someone else registered before you came into the new market.

I've been involved in a high-profile litigation case when Starbucks decided to come to Russia but realized that they couldn't because someone else registered their trademark there first. Trust me, you don't want to be paying the astronomical legal fees in a situation like that.

If you are interested in protecting your brand in Canada and the U.S., feel free to request your free trademark search at http://freeTMsearch.com . It's not just an automated online search, you will get our trademark agents do the search, write an opinion for you and walk you through our report—all for free.

Andrei Mincov
http://trademarkfactory.ca

Recent questions

Do people really steal invention ideas?

I sometimes see questions on forums like Quora about how to stop people stealing your invention i...

4 5386 2
Is interpretation of known historical facts protectable under copyright law?

I am looking for useful sources on protecting copyright. I am in the process of writing a book ba...

3 6115 2
Fair Use and news feeds

What is the current wisdom on compiling news feeds on a third party website so far as copyright i...

1 3962 0
Looking for good patent firm

How to find a good patent firm to help me apply patent in USA

3 4320 2
What constitutes 'prior disclosure'?

This might be a silly question but I’m a bit confused by ‘prior disclosure’ as it applies to pate...

2 4823 1

Do you have a question about your invention or intellectual property?
Search the questions below or post your enquiry to one of our experts via Directory.
(User questions are no longer posted publicly on this page.)