Theresa wright(1)

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Theresa wright(1)

  1. 1. Protecting your brand in international markets Theresa Wright June 2013
  2. 2. 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 consumers.
  3. 3. Relative availability • 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 given territory. • Even if the brand is applied only to goods for export in a manufacturing country. • Search: We can help devise a strategy based on your commercial needs and circumstances.
  4. 4. 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 market.
  5. 5. Inherent registrability • Trade marks must not be e.g. descriptive, generic, misdescriptive or offensive. • Judged based on local legislation in each relevant territory. • 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.
  6. 6. Register • Protect yourself from infringers and trolls • Protect your local partner/distributor/manufacturer • Secure a clear right and easy remedy • Create an asset that you can more easily value, license and transfer.
  7. 7. AFRICA • Major growth opportunities – particularly for South African retailers: • Consumer goods market makes up over 60% percentage of Africa’s GDP.
  8. 8. AFRICA • 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.
  9. 9. AFRICA • 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 countries. • No service marks in some countries.
  10. 10. CHINA • 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.
  11. 11. ELSEWHERE • Middle East expensive – but also troll issues. • Convention priority claims possible. • Blocks: CTM, OAPI • Madrid Protocol/Agreement applications.
  12. 12. REMEMBER • 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 goods/services?
  13. 13. REMEMBER • Consolidation and control: – Ownership – Representation • Licenses and registered user recordals. • Watches. • Marking. • Copyright. • Keeping your details up to date in the Register(s).
  14. 14. Theresa Wright Partner Adams & Adams Cape Town Office Tel: 021 418 8560 theresa.wright@adamsadams.com THANK YOU!

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