BKIP Limited

COPYRIGHT BKIP 2019
Strategy in registering overseas trademarks Jan 2019
In recent years, e-commerce has been replacing the traditional economic model. More and more products have gone abroad through e-commerce. This also means that companies need a good overseas trademark strategy. What do companies need to do to secure a good overseas trademark strategy?
1. Before a company registers an overseas trademark, it should have some basic understanding to the trademark law of the country in which the trademark is registered. For example, whether there are special requirements to be met, whether Chinese characters can be registered, whether the trademark registration is based on application or registration, and the types of trademark registration. The trademark laws of each country are different, companies should prepare in advance when registering overseas trademarks.
2. When conducting overseas trademark registration, the company should decide a product range. With regard to the types and natures of different products, the company can choose to register different products in different areas. For example, the sale of electronic products may particularly focus on some countries, while clothing and cosmetics may be planned to be sold to some other countries. Such decisions can avoid excessive trademark registration of countries and categories, which results in a waste of time and cost.
3. After determination of target countries and types of trademark registration, the company should complete the trademark registration in the exporting country as soon as possible before the export of the product, so as to clear the obstacles for product export. However, the issue should to be dealt case by case. In countries like China, Japan, South Korea, etc., the registration should be applied first. While in countries like the United States, Britain, Australia, Canada, etc., the granting a trademark registration bases on prior use of the trademark. The export trademark should be put into commercial real trade of the export country as soon as possible. It is also important to retain evidence of trademark use, such as invoices, contracts, advertising materials, product brochures, and practical labels. Then, even if someone else wants to pre-register your trademark, you can use these evidences to file an objection and take back your trademark.
4. When a company registers an overseas trademark, it also needs to protect the trademark registration in the relevant service category and similar trademark category. Take catering as an example. A company should register its trademark in both the food category and also the catering service category. A company in the mobile phone industry should register its trademark in the relevant mobile phone accessories and even the computer category. This can protect the competitiveness of the product by preventing any infringement of trademark rights.
5. Trademark priority is one of the provisions in the Paris Convention for the Protection of Industrial Property. After submission of a trademark registration in any member state, an applicant from any member state of the Paris Convention enjoys trademark priority right in all the member states within six months starting from the filing date. China is a member of the Paris Convention. We should make good use of trademark priority to reduce any obstacles in registration of overseas trademarks.