Below is an excerpt from John McKeown’s November 2017 Monthly IP Blog.
When a brand name is used internationally additional issues can arise.
A few years ago there were relatively few global brands – only consumer goods companies such as Proctor & Gamble, Nestle, Kraft, Colgate and Quaker were thought of as coming within this category. More recently Nike, Microsoft, Apple, and Honda have joined the category. With the rise of the Internet and online commerce more companies can compete internationally and building an international brand is a realistic goal for more businesses.
Any time a brand name will be used in more than one country consideration must be given to cultural and linguistic issues. Similar considerations apply to the design presentation of the brand name. A presentation may appeal to one culture but not necessarily appeal to others.
While it was initially thought that the Internet would encourage the global use of the English language, it appears the opposite has occurred and numerous linguistic communities have developed through the Internet. These developments cannot be ignored.
Consideration must also be given to the legal issues relating to intellectual property and trademarks. Trademarks are territorial and limited to the country in which they are used unless a specific treaty or international convention is in place which provides for protection in other countries. The availability of a mark for use and registration must be assessed in each country in which it is proposed to be used. In addition, protection should be sought concurrently in the relevant countries.
Generally if a trademark application is filed in the brand owner’s home country and an application for the same mark in association with the same goods or services is filed in other countries within 6 months of the initial filing date then the priority date in those other countries will be the same as the filing date of the initial application.
If a brand owner does not take timely steps to protect its trademarks in other countries it may find that when it wishes to carry on business in those countries it is blocked. This phenomena has occurred in China and many brand owners have experienced significant difficulty in trying to obtain their own trademarks because of speculative registrations.
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.