Articles

Maintaining Trademark Protection in the Global Marketplace

As a competitor in the global marketplace, corporations need trademark protection to engage in fair competition.  Recent developments in international law and the international legal climate have put the whole field of international trademark litigation into question.  However, there are still plenty of treaties that are honoured by more developed nations, detailing just what trademark protections exist between countries.

Often times, this varies according to the registration and “strength” of the trademark.  Protection afforded trademarks is also influenced by the rather subjective notion of where your market would “naturally” extend.  As such, lawyers will most often advise you to spend the money on  registering a trademark rather than simply using it as a common law trademark, in case of trademark litigation.  While both are considered perfectly binding and legal in North America and Europe, other nations won't necessarily recognize a common-law trademark in litigation proceedings.

Therefore, asserting a product position very clearly in the markets a corporation would like to expand into will help establish a history and some additional trademark protection.  Even when a trademark is registered with the home country and submitted to international registration bodies (such as the as the Madrid System that encompasses much of the European Union) trademark litigation is far more likely to be successful.  Trademark protection generally is most concerned with the legitimacy and penetration of a trademark.

Only a very few companies have so successfully penetrated the market to the point where their trademarks have become generic terms.  You should be so lucky to be concerned about “genericizing” your trademark.  Protection is far more likely to be invoked when your trademark is being used to promote something other than your product.  Trademark litigation in Madrid System countries has generally supported strong trademark protections.

When considering just which trademark infringements a corporation will pursue, a trademark attorney will typically consider all these options as well as weighing the potential pay-off from successful trademark litigation against the  likely cost of pursuing such trademark protections.  Some markets are so corrupt and difficult to prosecute in, requiring pay-offs to get anywhere at all, that there's not point in bringing suit.  Sometimes a cease and desist letter from a lawyer is sufficient, though those who engage in trademark thievery usually are plenty aware of the state of trademark litigation and law practices in their home country.

When bringing a product to a worldwide market, a corporation needs to decide how it wants to approach trademark protection before even beginning to marketing their products.