IP protection when entering new market

Question

How do you deal with intellectual property protection when entering a new market?

Registering the brand in each market without first having an importer could be expensive, but on the other hand taking the product to a market before IP protection could lead to the brand being registered by someone else in that market?

Answer

Hello Firas

My response would be to check the UKTI website on IP protection, please see link below which I hope will help?

https://www.gov.uk/intellectual-property-an-overview/overview

Kind regards
Sarah

Answer

Hi Firas,

You are right to consider the commercial advantages that can follow from protecting your brand overseas. As well as preventing others from registering your trade mark (something that can be difficult and expensive to sort out if it happens), it can also allow you to control the sale and marketing of your products through an authorised distributor. At some point, you might want to take action to stop the unauthorised use of your brand in the particular country and this might not be possible without a registered trade mark.

You should also consider whether you are actually free to use your existing brand before you start exporting products to other countries. For example, it is possible to check to see if someone else has already validly obtained a registration for a trade mark that you might infringe if you use your brand in that country.

The cost of obtaining trade mark registrations outside the UK depends on the particular country and in most cases the range of goods and services that you want to protect. But there are a few different options to consider. One is to file national applications in the countries of commercial interest. You can also apply for a single registration that covers all of the countries in the European Union (EU). Finally, if you already have a UK or EU trade mark registration (or want to apply for one) there is a cost-effective system for extending that registration to several other countries around the world. An IP attorney will be able to give you an idea how much each option will cost so that you can make a commercial decision.

As well as protecting the brand, other types of IP rights are available if you need to protect the visual appearance of a new product and/or how it works or functions. To get valid IP rights you sometimes need to make an application before disclosing details of the product (e.g., to a potential customer or client) so always seek early advice from an IP attorney.

– Darran

Answer

Hi

Most IP rights are indeed territorial. So rights granted in the UK normally only cover the UK etc.

But there are international protocols which you can use to extend manys types of IP into overseas markets. in the case of trade marks this is the Madrid protocol. This enables you to apply once and cover some, or most markets – but you have to select which ones and each will have a cost. So you need to give this some thought.

The link below should help but if not, call the IPO on 03003002000 for free and ask about the Madrid Protocol.

www.wipo.int/treaties/en/registration/madrid_protocol/

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