International Trademark Infringement: Everything You Need to Know
International trademark infringement occurs when someone violates the rights of a trademark holder in another country.3 min read
2. How to Protect Intellectual Property Rights (IPR) Overseas
The iPhone and Trademark Infringement
International trademark infringement occurs when someone violates the rights of a trademark holder in another country.
In one infringement case, Apple sued Samsung for infringing on their design for the iPad and iPhone and using the design for the Samsung S 4G. The case took place in the United Kingdom, and the judge ruled against Apple. Apple requested that the court issue an order that would have prevented Samsung from selling their smartphone in the United States. They also wanted punitive and actual damages, and a ruling that Samsung had willfully infringed on their design.
In his ruling, Judge Colin Birss found against Apple because Samsung's smartphone did not have the subtle, simplistic design for which Apple products are known. As a result of losing the lawsuit, Apple was required to publish an announcement on its United Kingdom website that absolved Samsung of the claimed infringement. This notice had to remain on the website for six months. Apple had to publish this same notice in magazines and newspapers to help restore the reputation of Samsung.
How to Protect Intellectual Property Rights (IPR) Overseas
There are several easy and affordable steps that small companies can use to protect their intellectual property rights overseas, including:
- Developing a PR strategy with the help of an attorney.
- Using detailed language in subcontracting and licensing contracts.
- Fully researching potential partners in foreign countries.
- Making sure that Customs and Border Protections has recorded US copyrights and trademarks.
- Securing copyrights, patents, and trademarks in important foreign markets.
A patent or trademark will only give you territorial rights, meaning your intellectual property is only protected in the country where registration occurred. This means that United States trademarks and patents won't protect your IP in other countries. You should contact the intellectual property offices in individual countries to discover what protections they offer and how to complete the application process. You can find contact information for IP offices around the globe on the World Intellectual Property Office website.
Thanks to the Patent Cooperation Treaty (PCT), it's easy to file patents in several countries. By filing a single application with the United States Patent and Trademark Offices (USPTO), you can receive patent protection in as many as 143 countries. You can find more information about filing international patents on the USPTO website.
Under the original rules of the Madrid Protocol, you can receive trademark protection in 84 countries with a single USPTO registration application. In April 2014, the Madrid Protocol was expanded to provide protections in 92 countries. The USPTO website also has information about obtaining international trademark protections under the Madrid Protocol.
It may be a good idea to register transliterations when applying for a trademark. Transliterations are words written in characters from different alphabets.
There are several benefits to registering your intellectual property. For example, even though copyright registration is not required in the majority of countries, registration will provide you with proof of ownership, which can be valuable in a court case.
The United States has developed relationships with other countries for the express purpose of protecting intellectual property rights. With these relationships in place, each country recognizes the IP rights of the other's citizens. However, because the US has not been able to establish this sort of relationship with every country in the world, it's important to learn which countries will automatically recognize your IP rights and which won't.
If a company believes that a trademark — which can be a phrase, word, or symbol — would help improve the value of their brand in another country, they should consider registering their trademark to protect their rights and to reduce the risk of international trademark infringement. Companies must be able to control their brand globally so that their valuable intellectual property isn't used without their approval.
Before you attempt to register a trademark outside of the United States, you need to understand every country's individual trademark regulations. After you've registered your trademark in your home country, you should consider registering in every country that may be important to your business. To register a trademark internationally, you should consider hiring a patent attorney for assistance. You could also apply for a Community Trademark (CTM). With a CTM, you'll will be able to use one application and pay one fee to register in every country in the European Union.
If you need help with understanding international trademark infringement, you can post your legal needs on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.