Brands Without Borders

Marina Lang discusses how can companies doing business globally protect their most important asset–their brand

A company’s brand is the one form of intellectual property that, if maintained, never expires. Illegitimate traders, in all industries, are taking advantage of today’s global expansion at the same pace as legitimate brand owners, creating an urgency for business to secure brand protection in all their major markets. Various international treaties have emerged modernizing, digitizing, and streamlining the legal practice of securing global brand protection. Due to these growing efficiencies, a few of which are elaborated upon below, I can manage vast global trademark portfolios for clients from the desk of my California office.

The World Intellectual Property Organization (WIPO) manages several international treaties. Related to brand protection is the Madrid Union, which has 100 member countries and counting. This comprises approximately 80% of international trade. The European Union, Norway, China, Japan, Australia, New Zealand, Russia, Ukraine, India, Mexico, and many Arab countries are notable members. Indonesia and Thailand are some of the newest members. Absentees include Canada, Hong Kong, and several South American countries.

Though the Madrid system has been around for some time (comprised of the Madrid Agreement Concerning the International Registration of Marks of 1891 and the Madrid Protocol of 1989), it underwent serious modernization in the last decade. For example, brand owners can now use a single digital form to apply for protection in any member country. It allows for a single application, in one language, with one set of fees. Gone are the days of paper applications, hiring lawyers in each territory to prepare and file said forms, and paying translation fees. The Madrid system has also simplified transfer of ownership, even for entire trademark portfolios. Often a compelling force behind business acquisitions is the seller’s brand and associated goodwill. An assignment to a new owner can be done with a single form sent to WIPO.

Gone are the days of paper applications, hiring lawyers in each territory to prepare and file said forms, and paying translation fees. The Madrid system has also simplified transfer of ownership, even for entire trademark portfolios.

Up-and-coming modern features of the Madrid system include an online search tool for pending and existing trademarks. Right now, there is a beta version of the “Madrid Monitor.” The goal of this new search engine is to give attorneys, and the public, real-time status of any international application. To be sure, my practice would benefit from the ability to conduct a global “google” search of marks and their related pseudonyms, logos, and word-combinations. Having visibility of internationally registered marks helps attorneys craft a more effective strategy for clients. This includes a discussion of the risks of their international application and the costs of overcoming potential refusals, as well as providing more accurate budgeting prior to foreign filing. I want to know which brands may block my client’s application and the identity of the companies behind them. Is this company a senior user, and if so, are they potentially defunct or the brand no longer in use? Are their profits suffering to such a degree that my client might easily acquire them or move to set aside their aged marks? Global market transparency allows for better overall business strategy.

Domain names also encompass a company’s brands. An infringing domain name can be taken down via the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”). Many now have financial interests in new gTLDs, which unfortunately, but not unexpectedly, have created a rise in cybersquatting (i.e., .XYZ, and .EMAIL). The key to prevailing in these types of actions is showing that the disputed domain name is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances as evidence of bad faith:

  1. The domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name;
  2. The domain was registered to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration;
  3. The domain was registered primarily to disrupt the business of a competitor;
  4. By using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.

After a UDRP Complaint is filed, the domain may automatically get suspended. In most of my cases, the respondent defaults by failing to even respond to the complaint, no doubt because registration of the domain was, indeed, in bad faith. When this happens, respondent’s default is viewed as an admission of fault and eventually the domain is cancelled and transferred to my firm or my client.

Finally, U.S. Customs and Border Protection (CBP) and U.S. Immigration and Customs Enforcement (ICE) has become more effective with its digital system of recordation. The brand must be registered as a trademark first, but then the brand owner can register their mark online with the Intellectual Property e-Recordation (IPRR) system. This online system allows brand owners to electronically record their trademark with CPB, eliminating the archaic method of paper applications and supporting documents. Registration certificates and sample images of how the brand is used on products can be directly uploaded to the site. Once this information is uploaded and recorded, CBP can utilize it to seize imported goods that violate trademark and other intellectual property rights. The modernized system allows the brand owner to easily upload samples of what legitimate imported goods should look like, using videos and photos. They can also upload training guides to educate CBP personnel on what to look for within imported goods. Brand owners can also update their file as their products develop and directly report specific shipments and parties.

Modern strategies to better protect brands across the globe will only continue to grow, and to the extent not already engaged, I look forward to utilizing the latest developments and technology in my own practice.

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