A trade mark gives monopoly protection to a brand. In the fashion industry brand protection is very important and when sales become international the brand needs to be protected on an international basis. This has the following benefits:
- It prevents imitations and counterfeits
- It adds value to the brand
- It can be licensed or franchised, which can add further value
- Use of the brand can be more strictly controlled
How does a fashion business develop an international trade mark strategy? What are the key issues and what steps can be taken that are effective but not costly? Ultimately a brand which is registered is likely to command a high price on sale.
Trade marks are national
The first issue is that trade mark protection is territorial and rights are confined to the country in which your mark is registered. If you trade solely in the UK then this is fine and there may be no need to consider international issues, but if the business is trading in other countries or is thinking of doing so then in order to obtain protection it is necessary to file a trade mark in each country where you do business. This can be a costly exercise as, although the costs of a UK trade mark application are reasonable, the costs would be prohibitive if applications were replicated throughout Europe.
The good news is that it is possible to register a trade mark that covers all 27 countries of the European Union (soon to be 28 with the accession of Croatia) and this can be done for a fraction of the price of covering each country individually. This gives monopoly protection for the mark for 10 years, which can then be renewed indefinitely.
For the rest of the world it is not so easy, but there is a system in place that allows for the protection of marks through a single application to WIPO (World Intellectual Property Organisation). This system does not cover all countries, but does cover 87 countries which include the US, Japan, China and Australia.
The downside is that fees need to be paid for each country designated; although this is not as costly as filing for a mark in each country separately. Some countries require that the applicant has an intent to use a trade mark and therefore care should be taken to ensure that countries where the business is trading or contemplating trading are designated.
If you trade in Africa there are two international systems ARIPO and OAPI that protect a limited number of African countries through a single trade mark application.
Some tactical considerations
If you are considering protection of your brand internationally and you do not wish to incur all the expenditure of doing so at the outset one tactic that is worth considering is the priority system. This permits a trade mark to be backdated to the date of a first application, provided this is done within 6 months of the first filed trade mark. For example, if the business wishes to obtain protection in the UK, US and Japan, a trade mark could be first filed in the UK on 1 December 2012 and then in the US in March and in Japan in May and all would have filing dates of 1 December.
Any strategy is dependent on the international reach of the brand and the expenditure that the business is willing to spend, but it is very important that professional help is sought to devise the most appropriate strategy. At Fox Williams we have considerable experience in advising fashion businesses on their international trade mark strategy and manage global portfolios in a way that maximizes the value of the brand, whilst also saving on costs.