linked in facebook twitter rss

  • Interbrand
  • Brandchannel

your chance!
your chance!
Also of Interest...
     
  Protecting Your Trademark Far from Home
by Cassiano Golos Teixeira
September 26, 2005

The power of a brand in the market is directly related to the legal protection of the trademark. Therefore, any company that desires to be competitive and maintain or improve its own image in the market must adopt an international intellectual property (IP) strategy in order to have a strong trademark.

There are uncountable cases of companies that, before launching a product or even the name, do not make a deep clearance of their trademarks, identifying earlier trademarks that may be confusingly similar. So far, there are even more cases of companies that, after the clearance, forget that a strong trademark must not only be new and distinct, but must also be maintained so worldwide. Many times the consequences of not having an effective IP strategy only arises when the first shipment of goods to a foreign country is blocked in the alien port due to the existence of a similar registered trademark by a competitor. The problem is that covering foreign trademark regions may be costly, and, many times, impossible.

One would say that the best international strategy is to file trademark applications in all countries immediately, before any deal. But is this worthwhile? Indeed, notwithstanding the legal advantages of such an option, in most cases this is a utopian idea, especially for small- and medium-sized enterprises or for low gross profit products of large enterprises, which simply don’t have the resources to acquire full trademark worldwide.

Many countries have means in their legislation to avoid unfair registrations. For instance, the Brazilian Industrial Property Law of 1996 provides that every person who, in good faith on the priority or filing date, has been using an identical or similar mark in Brazil for at least six months to distinguish or certify an identical, similar or alike product or service shall have the right of preference for the registration. In other words, a person who has been using a trademark in Brazil for at least six months has priority registration if there should enter a competing, similar mark (not yet registered) on the market.

 
 

Although, if it is not easy to enforce a prior used trademark by such legal means, it would be even harder or impossible if the prior user does not know that a further application has been filed.

Another point: Even if you have an application or a registered trademark, you must be pro-active, enforcing it against other applications or counterfeiters. But if you don’t know what your potential competitors or counterfeiters are doing worldwide, what can you do? Nothing—just lose your corporate identity among uncountable similar trademarks.

But do not forget: In some countries (for example, Switzerland, which is not a party to the European Community Trademark system), there prevails a first-to-file system where the protection for prior users is very restricted.

Therefore, in the determination of the intellectual property strategy of a trademark, it is very important to consider many factors, such as the intended lifecycle of the brand, potential consumer markets, and potential producers’ and counterfeiters’ countries, among others. Choose the strategy that best fits your business plan budget.

In this manner, the best practice that should be included in all strategies would be: Watch out!

 
   
   Cassiano Golos Teixeria is a trademark attorney at Abreu, Merkl Advogados Associados, a Brazilian law office specializing in Intellectual Property law.



 
 commenting closed Add Social Bookmark bookmark  print
 suggest topic  recommend ( 5 )  email

  brandchannel brandspeak archive   2014  |  2013  |  2012  |  2011  |  2010  |  2009  |  2008  |  2007  |  2006  | 2005  |  2004  |  2003  |  2002  |  2001
 
 
Dec 19, 2005 Feeding the brand: New adventures in podcasts, RSS, ring tones and digital radio -- Nick Wreden
  Podcasts, RSS, ring tones and digital radio offer endless ops to communicate the brand in the 21st century.
   
 
Dec 5, 2005 Can Americans Do It Better? -- Vincent Grimaldi de Puget
  Why is it so hard for the Detroit manufacturers to get it right? A little bit of brand management could drive GM a long way down the road of solvency.
   
 
Nov 21, 2005 Capturing young minds with compelling content -- Nic Jones
  Developing an active relationship with your young market means creating engaging content.
   
 
Nov 7, 2005 Does your brand have hand? -- Karl Treacher
  The quickest way to lose loyalty? Offer to do whatever it takes to please the customer.
   
 
Oct 24, 2005 Tragedy Has a Language All Its Own -- William Lozito
  Words can be as powerful as a natural disaster, or would that be tragedy? A look at the descriptive power of words.
   
 
Oct 10, 2005 Choosing a Powerful Brand Name -- Tom Blackett
  In the top 100 global brands, family names are the most prominent. What can we learn about naming from looking at the top 100 brands in the world?
   
 
Sep 12, 2005 Hip-Hop Culture Crosses into Brand Strategy -- Joseph Anthony
  Big corporations cross over to cash in on the hip-hop craze sweeping the US.
   
 
Aug 29, 2005 Nurturing a brand strategy in retail operations -- Linda Anderson
  How can a brand help nursery and garden retailers reap rewards?
   
 
Aug 15, 2005 Goodwill Hunting: Financial Value of Marketing & PR -- Doug Albertson
  The value of goodwill in gaining return on your marketing investment.
   
 
Aug 1, 2005 Marketing Metrics and Package Design -- Ted Mininni
  How can a good package help deliver return on investment?
   
 
Jul 18, 2005 China shops for new US export: global brands -- Carl D. Howe
  Lenovo buys IBM's PC business, Haier bids on Maytag and CNOOC bids for Unocal. China is on a shopping spree for US brands.
   
 
Jul 4, 2005 The Value of Technology in Managing Brands -- Kent St.Vrain
  Can the technology platforms used by finance and operations help marketers too?
   
 
Jun 20, 2005 Miss Silverbird International: Brand extension or brand arrogance? -- Uche Nworah
  Miss Silverbird International competes on the crowded stage of world beauty pageants.
   
 
Jun 6, 2005 Can Automakers Make Us Dream Again? -- Vincent Grimaldi de Puget
  The real strategic issue is that young grads dream of Silicon Valley rather than Detroit. GM and Ford not only compete with Toyota and Renault, but also with Google and Pixar.
   
 
May 23, 2005 Attracting Consumers through Package and Product Innovation -- Satkar Gidda
  Those that have the courage to innovate will sweep the board over the “me too” brands.
   
 
May 9, 2005 Overpowering the Brand Cynic -- Maureen P. Wall
  Overcoming the cynics among your ranks.
   
 
Apr 25, 2005 Can China’s heritage brands be saved? -- Doris Ho
  Can China’s heritage brands compete against tough international goods and services?
   
 
Apr 11, 2005 In Pursuit of Brand Loyalty -- Jean-Léon Bouchenoire
  Do customers lack loyalty or have brand owners betrayed their brand promise? Demonstrated by examples from the car industry and fashion houses.
   
 
Mar 28, 2005 Are You Brand Worthy? -- Kim Castle
  How strong is your commitment to brand? Four questions to find out if your business is in fact brand worthy.
   
 
Mar 14, 2005 Open Source Branding: Invite customers in -- James Campbell
  Brands should drop the subtle psychological bullying and try genuinely interacting with their audience.
   
 
Feb 28, 2005 A human operating system for your brand -- Jean-Claude Saade
  Customer relationship management: In defense of an honest relationship with consumers.
   
 
Feb 14, 2005 Beyond Royalty Revenue: Measuring ROI from licensing -- Stephen R. Reily
  In an era where accountability for marketing resources is at an all time high, how should we measure the full range of benefits from licensing.
   
 
Jan 31, 2005 If marketing is not important to you, what is? -- Vincent Grimaldi de Puget
  A combination of strategic and organizational approaches to marketing is central to competitiveness and survival.
   
 
Jan 17, 2005 Kids’ Brands: Staple, fad, craze or classic? -- Nic Jones
  An appeal for categorizing kids’ products by distinctions between fads and classics.
   
 
Jan 3, 2005 Would you buy polluted water? Reflections on brands and sustainable development -- Vincent Grimaldi de Puget
  Is sustainable development good business sense? From junk food to environmental ruin, many brands are laughing in the decline of our planet and mankind.