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Brews & Brands - Registering and protecting your trade marks overseas

Date: 25 September 2017
Author: Lara Gun
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As far as work conferences go, I have to say that the Australian Craft Brewers Conference held by the Independent Brewers Association (IBA) in Adelaide in July would have to be one of the best gigs I have ever scored, at least in the life as a trade mark lawyer – who loves her beer.  The brewery tours (I did the magnificent Adelaide Hills), launch night, seminars, grand finale awards and, of course, great booze, set a bench mark for Sydney when it hosts the event next year.  I met some fabulous characters, and it’s probably the first conference I have been to where someone sitting next to you is putting away a big tinnie of Pirate Life IPA at 10.30 in the morning – yes it was my first brewer’s conference.

I had quite a few chats with brewing folk about their trade mark issues.  In most cases brewers had obtained protection for their marks in Australia but protection had not been sought overseas or, in some cases they had run into trouble getting a mark registered in another country.

Whilst it is always a case of “first things first” (getting registration in Australia first up) and of course serious budgetary considerations when you are setting out, it is prudent to register your key brands and logos well in advance of plans to manufacture or sell a product overseas as in some jurisdictions the registration process can be lengthy.

Obtaining registration rights early can prevent brew branding headaches and significant outlays down the track as your business expands.  A prime example is where a business builds up a strong following in Australia, starts to export to other countries and suddenly finds another party has registered and/or is using a similar trade mark for beer or similar goods.  This will pose a serious obstacle to the use and registration of your mark in that country and expose you to the possibility of legal action for trade mark infringement, goods being seized at entry points and being excluded from a lucrative market under your key brand.

In Australia, trade mark rights are derived from a “first to use” basis, not a “first to register” so that evidence of prior use and reputation may defeat a competitor using or registering your mark or a similar mark in respect of the same or similar products.  There are some countries, however, such as China, where the rule is “first to file”.  Unfortunately, this can result in calculating and opportunistic parties who, becoming aware of your reputation in other markets, will apply to register your mark in their country (including foreign language equivalents).  The registrant will then hold you to ransom so that, ultimately, you are forced to purchase their registration in that country because it’s simply easier than the alternative, such as initiating or defending litigation requiring evidence, legal documents and court proceedings or having to totally rebrand for one particular country. This of course defeats the purpose of capitalising on the reputation and goodwill that you have earnt in other countries.

Another scenario is that, if you were ever to sell your business, the buyer is likely to stipulate that, as a condition of purchase, your marks are registered overseas, particularly in key export markets such as the United States, United Kingdom, Europe and China.  The registration of your rights overseas can be a highly valuable asset to your business.

How to register overseas

When filing a trade mark application overseas, there are several options available to you and it is a matter of deciding which is best suited to your needs.

(i) International Registration under the Madrid Protocol

Australia is a signatory to an international treaty known as the Madrid Protocol which provides for the international registration of trade marks.  This allows you to file a single application designating any country or countries of interest that are members of the Madrid Protocol.  There are currently over 90 countries in the Madrid Protocol so it is a matter of working out which jurisdictions are of most importance to your business.  A great aspect of this system is the European Union can be designated as a single region.  Whilst the UK is still included in this designation, as it is unclear how the rights of intellectual property holders will play out with Brexit, it is prudent to designate the UK separately.

To file an international application you must have either an Australian trade mark application or registration.  The international filing undergoes preliminary examination for formalities at the central office at the International Bureau in Geneva and then gets sent to each of the individual designated countries for examination.  Examination should take place within six to eight months and registration is likely to occur within about 18 months, assuming no serious objections are encountered.

What are the benefits of filing under the Madrid Protocol

  • Tends to be less expensive than filing separate national applications in each country
  • It is possible to designate additional Madrid member countries down the track as your business and overseas markets expand
  • The renewal process is much simpler
  • Administrative matters are much simpler and cheaper to manage ie changing of names, address, ownership can be done centrally
  • There are no registration fees once the application has been accepted and published (except for Japan).  However, if your application encounters official objections or opposition in a designated countries, costs will be incurred as it will be necessary to engage local trade mark attorneys in that country to try to overcome the objection

(ii) European Community trade mark application (CTM)

This regime is a single application, which covers all 27 member countries (or 26 post Brexit) of the EU and is a valuable means of obtaining European trade mark protection but it is less cost effective than filing a Madrid application designating the EU.

(iii) National application

This option involves filing a trade mark application directly in the country of interest and the costs vary from country to country, including official government fees.  It means that you will have to engage local representatives to file and prosecute the application for you.  For countries of interest that are not members of the Madrid Protocol (Canada, South Africa, some Asian and African countries) or not part of the EU, this is the only option.  Obviously, where official objections are raised during examination further costs will be incurred and, once accepted, registration fees will typically be payable.

Pre-filing/use searches

It is a good idea to conduct some preliminary searches before filing an application to register your mark overseas and before using your mark in other countries.  This, however, can be very expensive so it is possible to conduct some very limited ‘exact ‘or ‘similar’ mark searches which may give you at least some peace of mind.  The next step is filing and your trade mark attorney will help you develop a filing strategy reflecting your timeframes and budget.


First published in the Australia Independant Brewers Association Journal, August 2017

Tags:  craft beer, trade marks, Lara Gun, Australian Craft Brewers Conference, Independent Brewers Association, FB Rice
 
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