With the advent of a global economy, foreign trademark protection is important. The need to obtain, maintain, and enforce trademark rights on a multilateral basis is becoming imperative because many United States companies look to markets beyond the country’s borders. Unfortunately, obtaining and maintaining trademark rights abroad is often a time-consuming, costly, and complicated process. Further, the enforcement of such rights in some countries is virtually nonexistent.
Differences in Trademark Laws
Trademark protection outside the United States is based upon the laws of the various foreign countries, which vary considerably. Unlike the situation in the United States, in most countries trademark rights are solely dependent on registration and use is not a requirement for registration. Accordingly, an American corporation need not wait until products bearing its trademark are actually being marketed before pursuing a program of foreign trademark registration.
Although in many countries actual use is generally not a condition precedent to registration, the failure to use the mark within a specified period after registration, unless legally excused, may make the registration unenforceable or vulnerable to a cancellation proceeding brought by a third party. In a few jurisdictions, failure to use the mark within a specified period actually nullifies the registration, but in most jurisdictions the registration remains alive until challenged.
The standards for registrability vary considerably around the world. Some countries only examine for so-called absolute grounds of non-registrability, such as descriptiveness and deceptiveness. Other countries only examine for relative grounds of non-registrability. Still other countries examine for both absolute and relative grounds of non-registrability. Moreover, some countries do not follow the United States’ practice of allowing applications to be filed seeking protection for a mark in more than one international class.
The time it takes to obtain a registration varies from months to years. In some countries it typically takes up to three or four years to obtain a registration, while in others registrations may be granted within several months after filing.
Many countries do not provide for an opposition procedure. In those countries that do, opposition proceedings are handled by foreign agents or attorneys and are the subject of various local requirements as to type of proof and appellate review.
The length of the term of protection also varies, as do renewal and assignment procedures. With respect to assignments, most countries do not require the transfer of the corresponding goodwill. Therefore, protection for trademarks abroad requires a detailed understanding of the law of each jurisdiction.
Foreign Trademark Selection
The selection of a trademark for foreign use and registration is generally governed by the same principles that apply in the United States. A truly distinctive trademark should be selected in order to avoid rejection by various foreign trademark offices. It may also be advisable to obtain trademark searches in the various foreign countries in advance of filing an application to register.
Foreign Application Practice
American corporations file trademark applications in foreign countries through foreign law firms, agents, or governmental agencies which act before local trademark offices as their foreign associates. Usually, American corporations utilize American in-house lawyers or outside law firms as intermediaries. A foreign associate acts under a power of attorney running from the American applicant. Local requirements differ as to the type of power required, which is either general, authorizing the foreign associate to act continuously in local trademark matters for the applicant, or special, authorizing the associate to act only with respect to a single trademark application. Frequently, such powers must be legalized by a consular official of the foreign country based in the United States.
Foreign Trademark Licensing
An American business may license a foreign company to use its trademarks in marketing a product. Such license agreements are considered valid under the laws of all major commercial countries, provided the local requirements are met. Many countries require trademark license agreements to be recorded in the local trademark office or with some other governmental agency, or both. A number of countries require a trademark licensee to be entered as a ”registered user” of the trademark registration.