If you’re considering trading across borders, whether by selling into new markets, or engaging foreign suppliers and manufacturers, then there’s a few key things you should do, to protect your brand and your business as it becomes much more visible overseas. Here's our guide to five important issues you need to deal with.
1. ‘Freedom to use’ searching & monitoring
How do you know that someone’s not already using your brand in the foreign marketplace that interests you?
If they are, and you enter that market, you may unwittingly incur liability, by infringing their prior rights.
Prior rights searching allows you to identify and evaluate risks in this respect, and make decisions about the portrayal of your brand in foreign markets, before you enter that market thus avoiding unnecessary challenges.
Similarly, identifying third parties seeking to acquire rights which compete with your brand, or even hijack the goodwill associated with your brand, allows you to take effective and quick action. When combined with a strong counterfeit identification and takedown strategy, where main sales platforms are regularly checked, a real strength in the international marketplace can be obtained.
A good business checks for prior rights and monitors the marketplace.
Why do the work yourself, when you can get others to do it you ?
By registering IP rights with customs authorities, significant steps to prevent counterfeit products crossing borders are made - your brand is policed at the very front line. Customs authorities will identify and retain counterfeits, thus reducing diverted income.
A good business interacts with the authorities.
3. Foreign trade mark and domain name registrations
A real strength in combating third party activities is brought to the fore by obtaining registered IP rights. Registered IP rights are key in simplifying and strengthening formal enforcement action, be it court action, domain name disputes actioned through WIPO and others, or customs action (referred to above).
Registered rights are also key to providing brand exclusivity where a trader has not established goodwill in the relevant jurisdiction, as they allow enforcement activities to be conducted without having to establish local market recognition and goodwill.
Further, obtaining registrations can often block third parties from obtaining competing rights – not every trade mark registry in the world is like the UK, where rights holders’ are notified about applications to obtain potentially competing rights, but the registry does nothing – some registries maintain the (historically more prevalent) position, where the registry will block the potentially competing application itself.
Also know your local registrations – do you need a business licence to trade in the foreign jurisdiction?
Could registration by those you’re working with be a risk ? For example, registration of franchise arrangements in the UAE can have the effect of turning the franchise relationship into one of agency, and the UAE has similar agents compensation regulations to the EU.
A good business has a good rights registration strategy
4. Sunrise periods
Owning the key domain names which relate to your business, which replicate key marks, is fundamental to success.
With many new domains available every month, risk of third parties grabbing registrations from underneath existing operators continues to grow.
Many new domains are released under a sunrise period, where existing registered trade mark holders are offered an opportunity to acquire domains which replicate their registered marks, before those domains are offered generally to the public.
However, rights holders need to register to access these opportunities. If a business hasn’t “registered its registered rights” to allow advance acquisition of key domains, then that business is at risk, particularly when it expands into new markets and profile grows.
A good business gets their key domains before the general public.
5. Get a good adviser
No one advisor can tell you what you need to do in every jurisdiction. A successful business has access to the right people in the right locations. A good international adviser is one who has a good international network, and who’s previously been involved in work in the territories that concern you. There’s no substitute for experience.
A good business knows the right people.
Let us help you
To find out more about Harper Macleod’s international brand services, see our information sheet here or contact: