Protecting your brand in international markets
Trade marks are territorial
• Limited to country or territory where registered.
• Protect where you use or intend to use.
• “Use” encompasses manufacture and sale to
• Cannot register or use a brand if identical or
confusingly similar to a prior mark for same/similar
goods/services already registered or in use in any
• Even if the brand is applied only to goods for export
in a manufacturing country.
We can help devise a strategy based on your
commercial needs and circumstances.
Manufacture and Export
• The same applies in most countries.
• So: You must clear all brands in countries where you
manufacture/brand the relevant goods (e.g. China,
India, Vietnam etc.)
• Even if you don’t sell to consumers in the relevant
• Trade marks must not be e.g. descriptive, generic,
misdescriptive or offensive.
• Judged based on local legislation in each relevant
• May be inherently registerable in South Africa – but
not necessarily everywhere else.
• Negative connotation?
• Choose a distinctive brand that will work in all the
countries where you intend to supply.
• Protect yourself from infringers and trolls
• Protect your local
• Secure a clear right and easy remedy
• Create an asset that you can more easily
value, license and transfer.
• Major growth opportunities –
particularly for South African retailers:
• Consumer goods market makes up over
60% percentage of Africa’s GDP.
• In former French, Portuguese, Belgian and Italian colonies,
“first to file”.
• Most former British colonies “first to use” – but costly and
uncertain to prove.
• Very limited protection for “well known” marks (e.g. COKE,
COLGATE) – but most South African brands won’t qualify.
• Dumping ground for counterfeit goods – registration
of customs notices is a useful enforcement tool.
• Particularly damaging if health implications.
• Increase in “squatting” – particularly in Nigeria
• Important to record registered users in most African
• No service marks in some countries.
• First to file.
• China, Taiwan, Hong Kong and Macau have separate trade mark
legislation and registers.
• No protection for unregistered rights.
• Possible to register copyright to ease enforcement.
• Squatting for ransom prevalent.
• Not-infrequent Customs seizures.
• Register if only to “ring fence” your key brands.
• Do not let your manufacturers register your brands.
• Middle East expensive – but also troll
• Convention priority claims possible.
• Blocks: CTM, OAPI
• Madrid Protocol/Agreement
• Distinctiveness is key.
• Short run or long term?
• Use it or lose it!
• Regular portfolio reviews:
– Are all your trade marks still in use/important?
– Are all your important trade marks protected
where they should be?
– Are your trade marks covered for all current
• Consolidation and control:
• Licenses and registered user recordals.
• Keeping your details up to date in the Register(s).