Mikołaj Lech

patent attorney

A lawyer, who specializes in industrial property law, combating unfair competition and copyright. Thanks to work in Patent Agency he has a contact with the current problems of entrepreneurs.
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11 Feb

Protect your trademarks if you operate internationally!

Today I will tell you the story of one of my clients in relation to one of his trademarks. It is a company that operates internationally, exporting goods to several countries in the world. Of course, it protects the trademarks of their products in Poland and in EU. However it did not have protection of their trademarks in all countries where they implemented their goods. This endangered its good name and finances of the company. If you like to learn from others’ mistakes – read on.

 

How your official distributor can block your market?

Entrepreneurs who operate internationally often work with selected companies in the particular country. They sign a contract with them to provide official distribution and advertising materials.

It’s simpler sollution than setting up in each country a separate company. However, it has drawbacks.

You can come into conflict with such a company. And then the uninterrupted flow of your goods to a particular country is shaken.

 

Life shows that this is not the worst thing you could meet.

One of the distributors of my client after many years, broke a contract with him (when no one knows what it’s all about, it’s probably (most likely) about money). Simply a man with whom he collaborated felt a father of the success of the entire brand.

And he was almost right.

Over the years, he was marketing and promoting the trademark in his country.

However, fair to say, he was not selling his product and the brand did not belong to him. Furthermore, he had a lot of suppert with advertising from “headquartes”.

Naturally, my client decided to collaborate with someone else. It turned out, however, that the former distributor registered the trademark on himself. Thus without his consent no goods marked with this trademark could not be sold in this country.

 

 The man was insolent. Don’t you think?

From day to day it turned out that the domestic market has been blocked.

Each day of duration of this situation meant for my client quantifiable loss.

Protect your trademarks!

How can you unblock the market of a particular country?

Of course, registration of a trademark, by a former distributor is a textbook example of a registration in bad faith. A former distributor registered a trademark, knowing that he has no rights to the trademark. He did it in a secret from my client, to reap economic benefits. For example, by a later attempt to sell him a trademark.

Such a trademark can be cancelled in a litigation procedure.

The problem is that everything takes time.

And as you know, time is money.

Furthermore cancellation of the trademark in exotic countries can be a real achievement. I have in this field a negative experience with one of the African countries. The procedure is pending for the second year and no end is in sight.

What can you learn from the story of my client?

That you should protect your brand in each country in which you run a serious business. Thanks to this you can be sure that the trademark belongs to you.

It will not be stollen by no one.

Then you can sign with the distributor to a license agreement for the use of the trademark. In such a case, you can control everything.


Do you operate internationally? Start with market research.

If you operate internationally, than your business steps, shall be preceded by defined legal steps. Exporting goods to the selected country you need to be sure that it does not infringe the rights to someone else’s brand. Therefore, yet in the planning stage you need to do so called trademark registrability search.

The main aim of the search is to check whether your brand does not mislead the consumers. In other words, whether on the territory of a country there are not registered trademarks identical or similar to yours.

The analyssis when a particular trademark is simillar and when is not, reguires knowledge and experience. If you want to take advantege of professional help, the best option is the help from patent attorney.

Collisions I’m referring to occur anyway more often than you think.

When I carry out such a search for my clients, the collisions are on average:

  • in 1 per 3 trademark searches for Poland and
  • in almost half of trademark searches for European Union (!).

Planning to enter the market of 10 countries you can be informed that eg. in 2-3 somebody protects, completely in good faith, already similar trademarks. Either you decide not to export goods to these countries or they will be exported under different brand.

Otherwise you risk that your goods will be busy, eg. by customs officers at the border.

At the end I’will tell you that stories such this of my client are not unique at all. They are not usually mentioned in the mass media. I often say that it is always worth anticipate problems that may arise in the future.

Preventive measures are usually cheaper than repairing the damage, which occurred.

Mikołaj Lech

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