Protecting your brand overseas - a guide to IP. UK companies looking to export must first protect brands and intellectual property (IP) globally. Trademarks, logos, designs, patents require legal protection in every new market. This avoids risks and lets you enforce rights abroad.
In this guide, Mike Tennant, Chartered Trade Mark Attorney, will explore key steps and strategies UK companies should consider when protecting their brand overseas be it expanding globally or exporting their brands.
Register Trademarks
Registering your trademarks overseas is critical. It establishes legal ownership in each country you export to and lets you stop unauthorised use like counterfeiting, cybersquatting, and infringement.
Your rights in one territory do not automatically to other territories, so your UK trade mark rights will not protect you in Germany for example, you must seek registration specifically for each territory.
National, Regional and International Options When Protecting Your Brand Overseas
There are some regional registrations that can be applied for, including an EU Trade Mark which protects the 27 members of the European Union in one registration and OAPI, which covers 17 French-speaking member states in Africa.
The Madrid Protocol is an international system with over 120 member signatories. Through the system, we can apply for marks in any of the member states directly, through the protocol. If you are exporting to several different countries, then filing an international application through the Madrid Protocol, designating the territories you want to register for, could be a cost-effective way of procuring international trade mark rights.
Understand Local Laws
Every country has unique trademark laws and requirements. Some do "first-to-file", others recognise "first-to-use" rights. We trust in our international network of foreign associates to give us the best advice in relation to national trade mark rights abroad.
We can instruct and advise associates on specific matters, including searching, assignments and trade mark enforcement in their international territory.
Example: China follows first-to-file system so brands must file asap before counterfeiters.
Active Protection
Registration alone is not enough. You must actively protect and enforce rights continuously abroad too. Use marks consistently in each country. Monitor for unauthorised usage. Take swift actions against violations. These actions include:
Record trademarks with customs to block counterfeit imports. Hire investigators to find cybersquatters, shady operators. Send cease and desist letters. Sue repeat offenders if necessary. Stay vigilant against brand misuse globally.
Example: BMW detected counterfeit car parts in Dubai. Recorded trademarks and got authorities to seize goods.
Licensing
If you won't directly operate somewhere, you can license brand to local business. Set contractual terms for using trademarks. Expands reach without overhead. But must still register marks there first. And closely monitor licensees.
We can help with advising, drafting, due diligence and enforcement of license and franchise agreements with foreign affiliates.
Example: FMCG company licenses brand to Indian manufacturer to introduce products locally. Must tightly control quality.
Market Entry Strategies
Consider market entry strategies when expanding. Exporting directly, licensing to partners, joint ventures, local offices/plants, acquisitions of local brands.
Whatever works best for your business, we can ensure that the IP side of your exporting strategy is catered for.
Exporting
Register trademarks in all export countries. Use licensing to expand reach.
Partnerships
Register marks jointly. Clear IP ownership terms in contracts. Quality control for licensed goods.
Local entities
Transfer branding assets and trademarks properly to new foreign subsidiaries.
Acquisitions
Conduct due diligence on brands. Assign/record name rights.
Example: Fast food chain entering China via franchising. Must register trademarks beforehand and include IP protection in franchise agreements.
Next Steps
UK companies expanding globally should invest in comprehensive IP strategies. Registering trademarks before exporting, or as early as commercially possible overseas provides a legal foundation and assurance. Working with qualified attorneys gives expert guidance when exporting brands internationally. Take key steps to protect intellectual property in every new market.
