Lifecycle of a smart idea | Starting strong: Building out a global trademark and design profile

55 minute read
05 October 2020

From counterfeiting threats to multi-jurisdictional enforcement actions, to compete in today's perilous global brand landscape requires a clear and considered approach from day one. In this webinar – part of our Lifecycle of a Smart Idea series – our international team of IP professionals uses a case study to map out key trademark and design filing strategies your business needs to thrive, both at home and abroad.

The webinar featured top intellectual property lawyers from across the world weighing in on: 

  • mapping out the high-level plan for international trademark and design protection 
  • how to maximise trademark and design protection and budget, and 
  • potential pitfalls and best practices when going global.

Watch the webinar

LSO: This program is eligible for up to 1 hour of substantive content
Quebec: If you require a certificate of attendance, please contact Shannon Wadsworth
LSBC: This program is eligible for up to 1 hour toward the LSBC's CPD requirement
LSAB: This program is eligible for up to 1 hour of credit toward the CPD program

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Would you like to discuss these or other issues related to protecting and maximising your intangible assets? We're all about being connected. Get in touch with your trusted Gowling WLG IP advisor.

Below are some of our expert panelists' top tips.

Brexit has changed the intellectual property landscape in the UK

Kate Swaine – Partner, Co-head of Intellectual Property, Global, Birmingham, UK

  • On January 1, 2021, the UKIPO will create a comparable UK trademark for all right holders with an existing EU trademark. Consider whether these cloned UK trademark rights will create any duplication on the UK register.
  • The five-year "use" clock for the cloned UK trademark registrations will start on January 1, 2021.
  • If you have any EU trademarks that have licenses or securities registered against them, you will need to make recordals against the UK cloned rights after January 1, 2021.

Important design considerations around the globe

James Longwell – Partner, Toronto, Canada

  • Focus on the features of your product that set it apart and apply for those designs. You may need more than one application to protect your entire product.
  • Consider using the Hague system if you are seeking to protect a simple design, but keep in mind that many countries have yet to join the Hague Agreement, including China and the UAED
  • Do not rely on copyright protection for certain design elements where both protections may apply. In some jurisdictions, such as Canada, there are copyright enforcement exceptions for certain types of designs. 

Top tips for applying for protection in the UAE

Jon Parker – Partner, Dubai, UAE

  • Registration is key in order to help protect, enforce and commercialize trademark and design rights in the UAE.
  • Consider local language branding and take cultural sensitivities into account when choosing branding elements and marketing strategies.
  • Registration is expensive compared to other regions, but not having that protection exposes brand owners to their rights being misappropriated, which in turn might cost them the ability to do business in the UAE.

Three tips for trademark and design protection in China

Dr. Jian Xu – Managing Director and Head of Intellectual Property in the Beijing Office, Beijing, China

  • Register your key trademarks and designs as early as possible in China. China is a rigid first-to-file system and it has virtually no protection for unregistered IP rights.
  • Trademark piracy and trademark trolls are a common problem in China. If you do not register your trademark then the trolls probably will.
  • Think about a Chinese translation for your English brand and register that Chinese character trademark as well to ensure you own the Chinese version of your brand. If you do not choose one the market may choose it for you, and a third party may register the marketplace name.

Protecting your trademarks in Russia

Veronica Fridman – Counsel, Moscow, Russia

  • Clear both translations and transliterations of your mark and apply to register the Cyrillic transliteration of your mark and translation where possible.
  • Make sure that your agreements with designers, advertising agencies, or local distributors have strong IP-related representations and warranties clauses and no infringement obligations.
  • Keep agreements with individual authors on file in case you need to present those as evidence of copyright ownership.

North American filing strategies

Shelagh Carnegie - Partner, Co-head of Intellectual Property, Global, Toronto, Canada

  • Spend resources on clearance. In the end it is less expensive than making global filings only to discover you have to change direction due to a third party issue.
  • Maximise protection and budget by filing for word marks in standard characters and designs without colour claims.
  • Stretch out budgets by taking advantage of priority periods.

Watch previous episodes

This is the ninth installment in our Lifecycle of a Smart Idea series, dedicated to helping you maximise opportunity and minimise risk when taking innovative ideas to the global market. Watch more from the series »

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