{"id":101149,"date":"2018-09-12T06:05:12","date_gmt":"2018-09-12T10:05:12","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=101149"},"modified":"2018-09-11T20:14:11","modified_gmt":"2018-09-12T00:14:11","slug":"managing-international-trademark-portfolios-globalization","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2018\/09\/12\/managing-international-trademark-portfolios-globalization\/id=101149\/","title":{"rendered":"Managing international trademark portfolios in the Age of Globalization"},"content":{"rendered":"<p><a href=\"https:\/\/depositphotos.com\/195224554\/stock-photo-top-view-magnifying-glass-world.html\" target=\"_blank\" rel=\"noopener\"><img loading=\"lazy\" decoding=\"async\" class=\"alignleft size-full wp-image-101156\" src=\"https:\/\/ipwatchdog.com\/wp-content\/uploads\/2018\/09\/International-Trademarks.jpg\" alt=\"\" width=\"550\" height=\"369\" srcset=\"https:\/\/ipwatchdog.com\/wp-content\/uploads\/2018\/09\/International-Trademarks.jpg 550w, https:\/\/ipwatchdog.com\/wp-content\/uploads\/2018\/09\/International-Trademarks-300x200.jpg 300w\" sizes=\"(max-width: 550px) 100vw, 550px\" \/><\/a>Managing international trademark portfolios in the age of globalization can be a fickle endeavor.\u00a0 Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an increasingly crowded and adversarial global marketplace.\u00a0 When a brand attempts to gain a foothold with an emerging clientele, fortune tends to favor the strategically bold.\u00a0 For this reason, companies are often trying to establish their IP rights in countries where actual use or implementation may not be in the cards for years.\u00a0 In the case of trademarks, the benefits are obvious: if\/when a product is launched, a service begins, or a brand is introduced, a strong and enforceable portfolio is waiting to greet and protect it.\u00a0 However, in jurisdictions around the world, such a strategy leaves open the possibility of an attack on these rights, most commonly in the form of a non-use cancellation action.\u00a0 Thus, when considering a trademark filing strategy for international clients, it is important to contemplate a workable scheme to protect the filings from eventual vulnerability.<\/p>\n<p>If use of the trademark in association with the goods\/services for which it is registered is sufficient, vulnerability is not a concern.\u00a0 But what if there is only partial use?\u00a0 What if there is no use at all?\u00a0 Assuming the trademark owner maintains an interest in protecting the assets, there are helpful considerations for formulating a vulnerability strategy.<\/p>\n<ul>\n<li>First, know your client\u2019s portfolio in a given country. This will likely require a regular review of the portfolio to determine what is in use, what remains of high interest\/importance, and, most importantly, which filings are technically vulnerable to cancellation?<\/li>\n<li>Second, maintain a working knowledge of what constitutes satisfactory use to effectively \u201ccure\u201d vulnerability, or rebut a challenge based on non-use. Whether this means keeping in close contact with peer counsel abroad or diligently studying local laws, it is imperative to know what constitutes use in a given country, as these requirements vary.<\/li>\n<li>Third, consider the objectives of your client. How important is a jurisdiction and its consumers to your client?\u00a0 How important is a given suite of marks to your client\u2019s international business strategy?\u00a0 Are there limitations on the resources your client is willing to commit, or a level of risk your client is willing to accept?<\/li>\n<li>Finally, be aware of the options for overcoming vulnerability in ways that will maximize the trademark protection for your clients.<\/li>\n<\/ul>\n<p>Knowing your client\u2019s portfolio, and their related business strategy abroad, seems like a no-brainer.\u00a0 However, it requires a proactive attitude of communication and understanding (after all, a client\u2019s most common complaint of their representation is lack of open dialogue).\u00a0 Ask questions to try and understand their thinking &#8211; What countries take priority?\u00a0 Which marks are most important to their business?\u00a0 What are the core goods\/services which they hope to protect?\u00a0 Where are they currently using the mark, and where do they plan to use it?\u00a0 Once you know these details, come up with a strategy or a timeline to regularly review the portfolio to identify those registrations that may be vulnerable.\u00a0 It\u2019s important to keep in mind this varies from country to country.\u00a0 A three year old registration in Argentina is perfectly safe, while a sister registration filed at the same time in China or Canada is open to attack by any interested third party.\u00a0 Know your client.\u00a0 Know your jurisdiction.<\/p>\n<p>Now that you\u2019ve identified what may merit protection and what is technically vulnerable to cancellation, you must understand what constitutes satisfactory use to effectively \u201ccure\u201d vulnerability, or rebut a challenge based on non-use.\u00a0 Again, this is a jurisdictionally-specific question that requires the lawyer to be diligent in keeping up with country-specific norms.\u00a0 As an example, assume your client has a handful of premier marks central to their image and business as a high-end clothing and fashion brand.\u00a0 In order to crack into developing marketplaces, they filed broadly in Class 25 for a variety of clothing and accessories, but begin using the mark only in association with dresses. \u00a0\u00a0Among the targeted countries are Chile and China.\u00a0 In Chile, there is no use requirement whatsoever, i.e. attack on the ground of non-use is not available to third parties.\u00a0 Your client can rest assured their current limited use (or no use at all) does not leave the filing vulnerable to a non-use cancellation.\u00a0 However, the same cannot be said for China, where partial cancellation is allowed.\u00a0 If a third party was to attempt to cancel the registration, and evidence of the client\u2019s sole use in association with dresses was presented, the remainder of the broad Class 25 filing could be cancelled.\u00a0 Knowing how liberal or strict use requirements are in a given country will not only inform your vulnerability strategy, but should also be a consideration when developing the initial filing strategy.\u00a0 A little foresight is likely to lead to a more cost-effective trademark protection strategy.<\/p>\n<p>Of course all of this sounds good in theory, but at the end of the day, you serve your client, their wishes, and their wallet.\u00a0 That\u2019s why it\u2019s also important to take a step back, and consider the practical.\u00a0 Knowing what you know about your client and the countries, is it even worth attempting to cure vulnerability?\u00a0 As with anything, calculated risk can be your friend.\u00a0 Ask trusted local counsel to offer their opinion on how likely a challenge based on non-use actually is.\u00a0 Why expend resources to shield against an eventuality that in practice does not exist?\u00a0 If you report to a client there is extremely low-risk of a third-party challenge, chances are the related cost of fortification will seem an unnecessary gouge.\u00a0 The same holds true for jurisdictions and marks that are of lesser importance.\u00a0 Harkening back to the \u201cknow your client\u201d clich\u00e9, if a given country is not an integral part of their business model, or a given set of trademarks is being deemphasized, how can one expect a pitch to expend the necessary resources to fortify be met with anything other than an eye roll or an budgeters scorn.\u00a0 If you can make the case for accepting certain risks, your clients will thank you for it.\u00a0 It\u2019s often better to be seen as practical than to be seen as overzealous.<\/p>\n<p>Taking into account the above considerations, you should now have a working idea of \u201cwhat\/where.\u201d\u00a0 That is, considering cost, strategy, and legal particulars; you are ready to submit to your client a group of filings ripe for fortification.\u00a0 To fortify a given portfolio is to overcome vulnerability.\u00a0 In most instances this means refiling, thus starting the vulnerability clock over in a given country.\u00a0 In many situations, refiling to overcome vulnerability will come at time when the client\u2019s goods and services of interest have evolved.\u00a0 Therefore, refiling will provide an opportunity to have the goods and services in the filing more accurately reflect the current interests of the client.\u00a0 Where there is no use, it often makes sense to file broadly for the core goods\/services of interest to your client that reflects their current business goals, but at the very least covers those goods\/services that are not currently being used.\u00a0 Even if your client decides to take on the risk of vulnerability, it is important to reinforce that this does not mean not you are failing to renew a registration, or actively allowing it to lapse, it just means accepting the risk of a potential (often times unlikely) third-party challenge.<\/p>\n<p>Your international clients, at a certain point, want business in new and enticing marketplaces.\u00a0 This often requires aggressive and forward thinking measures, such as establishing IP rights before beginning business in earnest.\u00a0 The benefits of such a strategy are obvious, but so are the risks.\u00a0 Our job as corporate attorneys is to mitigate this risk as much as possible while integrating ourselves into the goals and mindset of our clients.\u00a0 In the case of trademark portfolio management, an increasingly important facet of this job is recognizing the need to protect vulnerable assets so they retain robust and powerful protection for our clients\u2019 business when they finally come ashore.\u00a0 Creating a strategy to protect vulnerable filings around the world by considering local law, legal reality, and client temperament can help businesses claim and maintain a foothold in an increasingly frenzied international market.<\/p>\n<p>Image Source: <a href=\"https:\/\/depositphotos.com\/195224554\/stock-photo-top-view-magnifying-glass-world.html\" target=\"_blank\" rel=\"noopener\">Deposit Photos<\/a><\/p>\n","protected":false},"excerpt":{"rendered":"<p>Managing international trademark portfolios in the age of globalization can be a fickle endeavor.\u00a0 Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an increasingly crowded and adversarial global marketplace.\u00a0 When a brand attempts to gain a foothold with an emerging clientele, fortune tends to favor the strategically bold.\u00a0 For this reason, companies are often trying to establish their IP rights in countries where actual use or implementation may not be in the cards for years.\u00a0 In the case of trademarks, the benefits are obvious: if\/when a product is launched, a service begins, or a brand is introduced, a strong and enforceable portfolio is waiting to greet and protect it.\u00a0 However, in jurisdictions around the world, such a strategy leaves open the possibility of an attack on these rights, most commonly in the form of a non-use cancellation action.\u00a0 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