International trade mark protection: First to use or first to file? That is the question.

Further to our article on how to protect your trade marks internationally, an important part of any international brand strategy is to consider where to file your trade mark. This may sound odd; of course you will want to file your trade mark in countries where you are using, or will use your trade mark but you should be aware that there are different rules concerning trade mark ownership in different countries; in some countries trade mark rights are acquired through use and in other through registration. Prioritising which countries to file in first is key to ensuring your brand is properly protected throughout the world and that you are safe from “trade mark squatters”.

For countries such as Australia, the US and New Zealand, trade mark rights are acquired by use. This means that as soon as you start using your trade mark in these jurisdictions, even if it is not registered, rights will be created from that use. On the other hand, for countries such as China, Japan and the UK, trade mark rights are acquired through registration, not use. So, the failure to register your trade mark in these first to file countries can leave your business vulnerable to “trade mark squatting”.

While it is important to seek trade mark registration in the markets in which you are operating or intending to operate, trade mark owners should be mindful that without trade mark protection in “first to file” countries, they risk losing rights to their brand. Therefore, applying for your trade mark as early as possible in these countries is advisable.

What are some first to file country?

Below are some first to file countries (this list is not exhaustive):

AlgeriaDominican RepublicKuwaitSlovenia
AnguillaEcuadorKyrgyzstanSouth Korea
ArgentinaEl SalvadorLithuaniaSpain
BelarusEuropean UnionMoldovaTaiwan
BotswanaGreeceNorwayUnited Kingdom
ColombiaIranPoland Zambia
Czech RepublicKazakhstanRussian Federation
Dominican RepublicKosovoSerbia

What are some first to use country?

Below are some first to use countries (again this list is not exhaustive):

ArubaItalySaudi Arabia
Brunei DarussalamKenyaSouth Africa
Costa RicaLebanonTurkey
CyprusMalawiUnited Arab Emirates
DenmarkMaltaUnited Kingdom
FijiNew ZealandUnited States
Hong KongPakistanUruguay
IndiaPapua New GuineaZimbabwe
IrelandPuerto Rico

What next?

If you are thinking about expanding your product and/or service offering to overseas markets, it is essential that you think about trade mark registration in the required countries as soon as possible. brandU Legal’s has extensive experience with brand protection and advising on brand strategies in Australia and throughout the world and can assist you with any questions you may have about the protection of your brand. Please contact us for further information.