There is no “one size fits all” approach as to how, where, and when a business should protect its trade mark. In an ideal world, trade mark protection should be sought as soon as possible in all countries where the trade mark will be used. However, this is not always the most practical or cost-effective course of action and adopting a more pragmatic and strategically targeted filing and protection strategy may be the best way to proceed. Trade marks are limited by territory and therefore it is necessary to register your trade mark in each country in which protection is required.
Tier 1 countries
Generally, it is a good idea to register your trade mark in at least the “tier 1” countries in which you primarily intend to manufacture or sell your goods or services. There may be other “tier 2” countries where your trade mark is being used to a lesser extent, and further protection may be an option. However, you will need to weigh up whether the size and importance of your commercial operations in these secondary markets merits a trade mark application.
Look to the future
It is also important to consider pursuing trade mark protection in countries into which you intend to expand your commercial operations in the future or where a potential investor or licensee may expect the trade mark to be appropriately protected.
The costs involved in filing and maintaining registration of trade marks may vary considerably between countries. It is advisable to have preliminary availability searches conducted in countries where you are intending to use your trade mark before actually filing trade mark applications in those countries. This will allow you to identify any potential obstacles to registration of your trade mark in those countries before incurring the more substantial trade mark filing fees.
Sometimes, it is important to protect your trade mark in certain countries, not necessarily because you want to enforce your trade mark rights against others there but because you want to defend the registration of your trade mark to ensure that others do not register your trade mark there first and then use the registration to disrupt your commercial operations. The costs incurred in securing a defensive trade mark registration will invariably be much cheaper than the costs involved in trying to challenge a trade mark registration that has been filed by others in bad faith in order for you to safely continue operating in that country.