Lawyer Monthly Magazine - February 2019 Edition

FEB 2019 20 Special Feature www. lawyer-monthly .com How To Protect Trademarks Internationally A trademark is a sign or design capable of distinguishing the goods or services of one enterprise from those of other enterprises. It can comprise words, or images, or a combination of both. Trademarks are protected by intellectual property rights. These operate at a national level, but also internationally through a complex system of treaties. As businesses move increasingly online, protecting trademarks internationally is ever more important. If your company has a website, its trademarks are visible to the entire world. Unless they are properly registered, there may be little to stop competitors using or adapting your valuable intellectual property. Registering a trademark will give notice to the public of the registrant’s ownership of the mark. Registration gives the registrant the exclusive right to use the mark in connection with the relevant categories goods and services, within the jurisdiction where it’s registered. In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner. The owner also has a right to license the use of his trademark to another party, usually in return for payment. In this case, the owner can specify the duration of the licence, whether the licencee can transfer it to another party, and also the geographical area where the licensee will operate. This means that a trademark owner can licence one company to use its trademark in France, and another in the UK, for example. Registration provides legal certainty and reinforces the position of the trademark holder, for example, in case of litigation or a dispute over first use. When registering a trademark, it’s important to ensure that the correct classes of goods and services are applied for. Goods and services have been divided by the International (Nice) Classification of Goods and Services system into 45 trademark classes. In order to protect a trademark internationally, there are two options: The first is to file a trademark application with the trademark office of each country where protection is required. This may be complex, costly and time-consuming. A preferable option is to use the Madrid System, which is operated by the World Intellectual Property Office (WIPO). Although international registration is not a requirement, it may become a practical necessity as a business expands, for instance: if a company begins to sell online or wants to open branches or franchises in different countries. In our era of easy online sales, companies selling their products wholesale might not even

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