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Your brand abroad

John Wilks, Partner at DLA Piper, outlines key actions you should take to protect your brand before considering overseas expansion.

The challenge

For any business, the tempting upsides of expansion outside of a home market come with plenty of potential challenges. Not least among these is the issue of how to efficiently and effectively protect your brand in new territories.

International expansion raises various issues from a brand protection perspective: 

  • Your brands may infringe third party rights abroad.
  • National trademark laws vary considerably, so it is necessary to engage local specialists to provide advice on trademark filings and strategy.
  • A growing international trademark portfolio managed by a number of local trademark lawyers could get out of hand if not properly and centrally managed.
  • The new territories may bring increased Intellectual Property (IP) infringement risk.

Tips for taking your brand international

These issues mean a business needs to be strategic in managing the international rollout of its brands. Steps which should be taken include:

  • Careful selection: ideally, a business will undertake trademark clearance searches in relevant new territories before it adopts a new brand. Otherwise, it may later find it has to drop the brand (or pay a hefty licence fee) when it expands, to avoid a claim for trademark infringement.
  • Register ASAP: as early as possible, a business should register at least its key brands in the territories it anticipates expanding to. In China in particular, non-Chinese brands can be registered by unauthorised Chinese entities first, which can be difficult and costly to have revoked. However, in some countries, an application must be supported by evidence of actual use in the territory, so it may not be possible to register before you are actually trading there.
  • Properly manage your trademarks: centrally manage your portfolio so you obtain a clear view of what protection you have and need and prioritise trademark filings according to agreed criteria such as commercial importance, cost and scale of infringement risk.
  • International applications: consider applying for Community Trade Marks (covering the whole EU), or using the Madrid system, a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. These options can save money and reduce complications if you wish to cover multiple territories.
  • Monitor: put in place watching services in relevant territories to alert you if a third party applies to register your brand as a trademark or domain name – also monitor the internet for third party infringements in the new territories.
  • Enforce: consider targeted enforcement action against anyone who abuses your brands in the new territories, to send a message to the market that you intend to protect your brand.
  • Capture your domain: ensure you register appropriate domain names which include the brand and any relevant translations and country code top-level domains (cctlds) such as .co.uk, .br for Brazil and so on. To acquire certain cctlds (.hr for Croatia for example) you need a local presence first. It will also soon be important to consider second level domains within the new generic top-level domains, some of which will be for geographical terms like .africa.
  • Don’t forget social media: register your brand as a username or page within the appropriate social media platforms for the territory, before others do. While Facebook is global, some platforms like Orkut in Brazil and Mixi in Japan are more country or region-specific.

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John Carroll - Helping businesses achieve International success. Head of Product Management & International Business, Santander UK