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How to protect your brand if you are planning to expand overseas

When thinking of registering a brand overseas, brand owners should decide which countries are targets for brand protection by identifying potential future markets as well as considering where a trade mark may help tackle counterfeiting.

Application costs increase by the number of countries selected, with some territories charging higher fees, so it is usually a question of prioritising brand protection within budget.

The starting point for most UK brand owners will be to apply for a Community Trade Mark, which provides protection across all 27 member states of the European Union at a reasonable cost. 

The Madrid protocol is an international system for facilitating the registration of trademarks in multiple countries around the world, which brand owners can do through one single application.. This can be a helpful and more cost and time effective way to proceed than making separate applications.

When is the best time to apply?

Generally it is best to apply as early as possible, although most retailers will have budget constraints, which will dictate a staged approach. It is recommended that retailers apply to protect the brand before an agent or distributor is appointed, as this will gives the brand owner greater control and can avoid disputes on termination.

Should brand owners also register domain names?

It can be useful to acquire the equivalent web site domain names in those overseas territories at an early stage, particularly if a local language or transactional website is planned.

If I’m thinking of expanding into China, do I need to register a Chinese character version?

If you are planning to trade in China is it worth registering a Chinese equivalent of your trade mark. This is so the local population who may not read roman characters will be to be able to pronounce the brand in Chinese. This also gives you the chance to pick a Chinese character version with positive connotations, which is not always the case if you leave it to consumers to come up with their own version. The best Chinese character marks are a combination of a literal and phonetic translation.

What are the risks of not registering trade marks?

The main risk for brand owners is that by time the business comes to expand into foreign markets a third party is already established under the same or a similar brand either by chance or deliberately hi-jacked. In most cases having a registered trade mark will assist with enforcement, control of the brand and open up licensing opportunities.

For more information please contact Nick Fenner, on 020 3465 4232 / Nick.Fenner@TLT Visit

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