By Scott Rogers (Ulmer & Berne LLP, USA) and Michael Best (Best Rechtsanwälte, Germany)

In all but the rarest cases, it makes no sense to register your trademarks in as many countries as possible or even on a “worldwide” basis.

As a rule, there are two places to start. Protect and register your trademarks (1) in countries where you are currently selling your goods or services; and (2) in countries where you may realistically sell your goods or services within the next three to five years.

In addition, it may make sense to protect and register your trademarks in countries where the goods using your trademarks are manufactured, even if those goods are not sold there. Doing so may block a third party from registering your trademarks, which is important because such a registration could prevent you from exporting your goods.

Should it later turn out that you will use your trademarks elsewhere, you should take immediate steps to protect and register your trademarks in those countries too.

If you are selling goods online globally, deciding where to register your marks can be more complicated. In such cases, consider registering your marks in the following places:

• The countries where you have the highest volume of sales;
• The countries where you can obtain rights in your trademark through use alone;
• The countries where the risk of trademark squatters, knockoffs, and counterfeit goods is higher;
• The countries where you would suffer significant damage if a third party has already registered the same or a confusingly similar trademark.

By AnneMarie Sheridan (Conair Corporation USA), and Jeff Lindenbaum (Rothwell Figg, USA)

There are three general categories of costs that you may incur when seeking to register a trademark: (1) pre-application costs; (2) application and other pre-registration costs; and (3) post-registration costs.

Pre-Application Costs

Before you apply to register a trademark, it can be valuable to conduct a search to make sure the name or tagline of the mark is not already registered or being used by another company. This could save you time, money, and a future conflict.

In many countries, you can conduct a free search on the website of the national trademark office. Costs can vary from country to country. In the United States, for example, a preliminary search on the United States Patent and Trademark Office (USPTO) website can cost as little as US $200–300, and a full search can be US $1,500–2,000 or more.

Application and Pre-Registration Costs

There are two different types of application costs: (1) mandatory trademark office fees; and (2) attorney fees.

Procedures and requirements vary from country to country, and most trademark offices categorize goods and services into classes. Again, using the United States as an example, the USPTO fees for filing an application are either $250 or $350, depending on the type of application filed. This covers one class of goods or services. So, for example, T-shirts and hats are in one class, but you will need to file two applications in two classes if you want to protect the mark for T-shirts and backpacks. If you file for more than one class, you typically must pay additional fees for each additional class.

Post-Registration Fees

In most countries, a registration does not last forever and must be renewed after a certain number of years, normally seven or ten years.

In the United States, after the mark is registered, it must be renewed before the six-year anniversary at a cost of US $225 per class, and then at every ten-year anniversary at US $300 per class.

Attorney Fees

It is often advisable to hire an experienced trademark attorney to clear, prepare andfile, your application. Many attorneys will do this work for a flat fee, while others will charge an hourly rate. Again, fees will vary depending upon the country. In total, you should be prepared to spend about US $1,000 in attorney fees for each application.

By Kellie Jukkola (Michael Buck IP, Australia) and Marc Fineman (Levenfeld Pearlstein, LLC, USA)

There are companies that access publicly available information to obtain fees from unsuspecting trademark owners. You may receive invoices and other “official-looking” correspondence sent to you by agencies that are not authorized to act on your behalf.

Be wary of any invoice that demands payment of heavily inflated or surprisingly low fees for a trademark maintenance filing, or that suggests you can protect your trademark via placement on an international trademark register.

Before paying any invoices, check the following:

• Is the invoice from a trusted attorney or the official intellectual property office in the relevant country?
• What is the actual cost of renewal? Be sure that any service charge above the official renewal fee offers you value for your money.
• Is the company that sent the invoice known to send phishing invoices? Examples of phishing invoices and scams can be found here and here.

There is no such thing as a single trademark registration worldwide, but you can register trademarks in most jurisdictions. Because the costs of registering throughout the entire world will be substantial, it is best to seek protection in those jurisdictions where you are likely to use your mark in the foreseeable future.

We use the term “jurisdiction” here rather than “country” because there are some exceptions to the general rule that registration must be sought on a country-by-country basis. For example, a European Union Trade Mark (EUTM) registration covers the whole EU; a BENELUX trademark registration covers Belgium, Luxembourg, and the Netherlands; and the African Regional Intellectual Property Organization (ARIPO) and the African Intellectual Property Organization (OAPI) both allow for the filing of a single trademark application, the registration of which will be recognized by all African countries that are members of the respective organization.

The Madrid System (which is administered by the World Intellectual Property Organization) allows applicants to seek trademark protection in many jurisdictions at once via a single International application, which will then be evaluated separately according to the standards in each designated jurisdiction.

This is a complex area and any SME seeking to register trademarks in multiple jurisdictions will benefit from working with a trademark practitioner.

In most jurisdictions you are not required to conduct a trademark clearance search before filing a trademark application, but it is strongly recommended.

The reason to conduct a trademark clearance search is to identify any identical or similar marks that cover similar or related goods on the relevant trademark register—as well as identifying any relevant unregistered marks by searching on web browsers and business registries. While a search can never be entirely comprehensive, it will help guide you as to whether use and registration of your mark may be blocked by conflicting third-party registered or pending trademarks or even inactive trademarks that have lingering user rights. Rights in these earlier marks are referred to as “prior rights.”

It is possible to use online tools and databases to search for trademarks in jurisdictions where you plan to do business. However, not finding an identical trademark does not mean that your selected trademark is available or that adopting it is otherwise prudent. And conversely, finding an identical mark does not mean your selected trademark is not available, as it may be distinguished by covering dissimilar goods or services.

The results of a trademark clearance search will always benefit from analysis by a trademark practitioner  who can help you to understand the meaning of the search results and help you make a risk assessment about the mark you are choosing.

A trademark clearance search is relatively inexpensive when compared to the cost of having to rebrand a product that has already been marketed in conjunction with a trademark in which another party claims rights. Similarly, the cost of defending your trademark in an infringement action by the owner of a previously registered or used trademark is significantly higher than conducting a trademark clearance search in the first place, as are the potential damages that you may be required to pay if you are found to be infringing. When it comes to trademark clearance searching, an ounce of prevention is definitely worth more than a pound of cure.

Even though I registered my domain name/company name, I received a cease and desist letter alleging infringement of someone else’s trademark. Doesn’t my registration give me permission to use the domain name/company name?

A domain name registration reserves an address for a website and a company name registration identifies the business to the government for regulatory and tax purposes. Neither type of registration confers rights to use the name in connection with goods and services to serve as a source identifier to consumers like a trademark registration does. Because these respective registrations serve different purposes, a domain name or company registration does not grant trademark rights to that name or prevent others from using it.

As such, even if you have registered a domain name or a company name, you may still infringe a third party’s trademark registration. If you receive a cease and desist letter, contact a trademark specialist in your country to help determine whether your name is in fact infringing and/or whether it may be possible to continue your use. Additionally, in the future, it is prudent to conduct a trademark search before choosing and using a domain name or company name and to consider registering that name as a trademark. A trademark specialist in your jurisdiction will also be able to advise and assist with this process.

If a distributor/franchisee (or any other party) registers your trademark in another jurisdiction that can be very problematic because it confers exclusive rights of ownership and enforcement in that jurisdiction on that party, and not on you. Based on that registration, the distributor/franchisee may exclude you from using the trademark in the relevant jurisdiction, place restrictions on your use of the mark in that jurisdiction (for example, you might be restricted to using it only in cooperation with that party), or block your own subsequent applications for your mark in that jurisdiction. Because cancelling or opposing a trademark filing by a third party may be costly, time consuming, and even unsuccessful, it is best to register important trademarks prior to expanding to a new country and to include express provisions in partner agreements confirming your ownership of trademarks and prohibiting registration by third parties. If a distributor/franchisee has filed an application to register your mark, consult a trademark specialist.

Generally, the use of names/trademarks that are similar or identical to an older trademark currently used in the same market segment as your own is prohibited. Furthermore, famous trademarks are usually awarded a higher level of protection, which means that the use of similar or identical names is prohibited not only in the same market segment where the famous brand operates but in any other segment of the market in general.

This is because the reputation of the brand may easily cause the public to believe that the products or services offered under an identical or similar name are in some way related to the famous brand. Additionally, it would be unfair for another business to benefit from the market power of a famous and well-established trademark.

For these reasons, the business names HARRY POTTER’S MAGIC CLAIMING SERVICES and AMAZON COURIER AND DELIVERIES are most likely not acceptable business names/trademarks, because they are very similar to the trademarks HARRY POTTER and AMAZON, which, being worldwide famous trademarks, would likely be protected in every market segment. Therefore, even if your products and services are not identical or similar to the ones provided under the trademark AMAZON or HARRY POTTER, it would be very difficult to register the names as trademarks and you would likely incur liability for trademark infringement.

If you wish to use a name/trademark that resembles a famous trademark or a trademark that you think may be famous, you should seek the advice of a trademark practitioner who can conduct a background search.

The use of the name of a real or fictional celebrity may trigger liability. Most jurisdictions prohibit the unauthorized use of names and images of celebrities, even if they have passed away. In many jurisdictions, similar protection is generally awarded under copyright laws to the images of fictional characters.

In many jurisdictions, the unauthorized use of a name or image in a way that is either degrading or prejudicial to the person’s reputation is prohibited (with few exceptions, for example, satire or parody).

Further, the celebrity (or the owner of the rights over the name and image of the fictional character) may be able to claim damages if the unauthorized use creates the risk that the public could assume a business relationship between the celebrity and the products. For example, a company may be liable for naming a line of make-up products after a famous make-up artist without the artist’s consent, since the use of the name could reasonably create the impression that the artist is involved in the production.

In some countries, such unauthorized use could also constitute unfair competition since the infringer would unfairly benefit from the reputation of the name and could result in fines and other punitive measures.

Finally, in some cases, the use of the name of a celebrity might even trigger criminal liability.

Therefore, if you use or wish to use the name of a celebrity, public figure, or fictional character, you should seek advice from a trademark practitioner to help clarify your options, if any, for moving forward.

In principle, a registered trademark provides protection only for the form of the mark as registered. In many countries, a trademark registration can be attacked if the mark has not been used for a number of years (usually three to five years). As such, if you do not use your mark as registered, the trademark registration ultimately could be attacked.

Since fashions and styles change over time, many trademark offices do, however, allow a slight modification/modernization of the form of the mark. The law varies from jurisdiction to jurisdiction, but, in general terms, if the relevant public, to which the mark is directed, would consider the changed mark and the mark as registered to be one and the same sign, it is likely that you should still be able to rely on your registration to protect the slightly changed mark. If the public would not consider the changed mark and your registered mark as the same sign, you should probably register the changed mark as well. However, since the law varies between jurisdictions, you should check with a local trademark practitioner in the jurisdictions where your mark is registered if you want to change it.

The best practice is to update trademark registrations with the new name and address as soon as commercially practicable. In many jurisdictions, renewals, declarations of use, and other important actions must be filed in the actual name of the owner and under the correct address.

Otherwise, in the event of a trademark dispute, names/addresses may need to be corrected with additional and costly new filings and under time pressure. Additionally, it may become difficult to prove use of the trademark as required for maintenance of a registration or in an adversarial proceeding where the owner’s name on the register does not match the name of the person actually using the mark.

That said, a trademark owner generally does not lose rights in a trademark registration if a change in the owner’s name or address is not immediately recorded.  Indeed, in cases where several registrations across jurisdictions are involved, it may not be cost-effective to proactively update all registrations, and an owner may decide to make updates as marks are renewed or other issues arise.

Although use can confer trademark rights in some jurisdictions, most jurisdictions grant trademark rights to the first party to file an application for a given trademark on the jurisdiction’s registry. If you don’t file a registration for your mark, others have the opportunity to file first, potentially preventing your own registration and compromising your freedom to use the mark and potentially even to operate your business.

Having a registered trademark is also critical to being able to enforce your rights as the trademark owner, because in most jurisdictions the registration confers a presumption of ownership and the exclusive right to use the mark in the jurisdiction of registration. Many legal claims and online platforms require a registration to enforce rights in a mark.