WNA Blog

Sun 5 Nov 2017

Five Things to Consider When Trademarking Overseas


Legal Services
woman pointing to a spot on the world map

With the internet opening up so many opportunities to do business globally, it’s vital that you consider how you are protecting your brand overseas from the outset.

If there is the tiniest chance that you will be trading outside Australia, you should do your homework before choosing a brand name so that it has the potential go global.

Many businesses register trademarks in Australia and after they’ve had success for a year or so of trading they look to expand into other markets.

However, when they start to market their brand in overseas locations, whether that be online or in a physical marketplace, they can often be tackled by competitors already using that brand name in that market.

In one case, a New Zealand business had a product they took to the United States of America (USA) and a company who were based in the USA challenged them legally in the US courts. They also challenged them in the Australia and New Zealand.

This US company had no intention of trading in Australia and New Zealand, but they know that this is only a small New Zealand business and the sheer cost of having to answer these legal cases will probably bleed them dry.

Victory to the competitor.

In a second case, an Australian company has two brand names for the same product due to the unavailability of the initial brand that was trademarked in Australia but not available in America. When they launched in America, they found they could not trademark that name, so they had to change the product name in America, thus having to produce new packaging for the product.

So, what do you need to consider, from a trademark perspective, if you are taking your brand outside of Australia?

  1. Get the brand name right at the start. Do your research and make sure there is nothing like it in the marketplace – anywhere. Unique names, acronyms and uncommon words/phrases are more likely to get trademark approval. Don’t use words that are descriptors like “experts” or “delicious”.
  1. Your brand needs to be trademarkable in key markets like USA, UK, NZ, India, Canada, France, Germany, China, Japan, etc. Find a brand name that is UNIQUE.
  1. If you have multiple products, look at ways to combine them under one brand. This will make it easier and cheaper when registering trademarks, e.g. one brand to register in five countries is five registration fees, and five brands to register in five countries is TWENTY FIVE trademark fees. Big difference!
  1. Domain names and business names do no protect your brand. Registering domain names and business names – even overseas – does not preclude others from using it or registering the trademark. If you can’t get a domain name, find out what is already out there, that will give you clues to whether the name you have chosen is trademarkable in your industry.
  1. Each examiner in each country will do their own examination, so don’t assume that if you get trademark approval in one country that you will automatically get it in another. You could seek help if you are unsure on how to search for overseas trademarks. A trademark expert knows where to look to thoroughly research global trademarks.

If it’s all too confusing, please feel free to contact us at Seriously Trademarks.


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