Considerations when developing a foreign trade mark filing strategy

Trade mark rights are granted on a national basis, making it necessary to register in each country or region in which protection is required. In light of separate registrations being necessary in each country of interest, filing and maintenance costs can escalate quickly if there are a number of jurisdictions where protection is sought.

In adopting a foreign filing strategy, there are a number of timing and cost factors that trade mark owners need to consider. These factors will, to a large extent, depend on the countries where protection is sought. Although a trade mark owner might ideally seek to protect their trade mark across the globe, filing and ongoing costs mean that in practice, trade mark owners may need to take a pragmatic approach to the selection of countries where protection is sought. As a starting point, trade mark owners need to consider which countries they have a real and genuine intention to use their trade mark in relation to the manufacture or sale of their goods or services, within the next few years.

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‘First to file’ versus ‘first to use’

Once the countries of interest have been selected, an important consideration will be whether those countries are ‘first to file’ or ‘first to use’. Many countries follow a first to file trade mark system. This means that the person who files a trade mark application and obtains registration will have priority, even if another party can show prior use of the trade mark. Accordingly, in first to file countries, it is important to file trade mark applications as early as possible to minimise the likelihood an unscrupulous party will obtain rights to the mark. On the other hand, some countries, including Australia, follow a common law system whereby the first person to use a trade mark will have priority over a person who files a trade mark application at a later date.

For Australian trade mark owners, China and the United States provide good examples of how, whether a country is ‘first to file’ or ‘first to use’, might determine where that country sits in a trade mark owners’ foreign filing strategy. China, for example, is a ‘first to file’ country so we recommend that if a trade mark owner is using, or is intending to use their trade mark in China in the near future, they should seek protection in China early. On the other hand, the United States is a ‘first to use’ country. This means that if a trade mark owner starts using their trade mark in the United States in commerce, and a third party subsequently files an application for the same mark, the trade mark owner who used the mark first will Trade Marks ultimately have stronger rights in the trade mark. Whether a country is ‘first to file’ or ‘first to use’ is only one determinant of where that country might sit in a trade mark owner’s foreign filing strategy.

In the United States for example, trade mark owners should keep in mind that actual use of a trade mark in the United States, is critical to obtaining registration and/or maintaining a registration. Trade mark owners filing applications in the US need to consider whether they expect to be able to demonstrate use of their trade mark in commerce in the United States, within a three to five year period depending on the basis upon which the US application is filed.

Costs of foreign filing

Other factors for determining where a country sits in a trade mark owner’s foreign filing strategy are the application filing costs and the costs of maintaining a registration. For example, in some Middle Eastern countries, the application costs can be as much as ten times the cost of filing an application in Australia. If there is only expected to be limited use of a mark in a country with significant filing and maintenance costs, obtaining trade mark protection in that country might be prioritised behind a country with lower costs, where there is expected to be heavy use.

If your business is expanding into countries outside of Australia, we recommend you speak to your attorney about developing a tailored, foreign filing strategy which ensures you are covered for key jurisdictions.