I’m writing from the Mid-Winter Institute of the American Intellectual Property Law Association (AIPLA). As a lawyer who does a lot of trademark enforcement work, one theme that I’ve noticed from multiple speakers so far is the importance of proactively protecting your intellectual property–especially for young companies. What’s more, in this increasingly globalized marketplace, simply registering your trademark or patent on your home country (eg, the US) often is not enough. Rather, seeking protection in strategic markets across the world can be vital to securing your brand’s long-term future.
Cynthia Raposo, SVP-Legal for Under Armour, Inc., underscored this point in her presentation yesterday. Today, Under Armour is a well-known global brand. When it began more than 15 years ago, however, it was just a struggling start-up like any other. Nevertheless. Under Armour decided early on to invest in its global trademark portfolio. It began with registrations in a handful of key countries, then quickly followed that up with a broader list of countries–both to increase market share and to get ahead of potential pirates. Sure enough, the knockoffs came out of the woodwork as the brand grew in popularity. But with trademark registrations already in place, the company had a leg up on fighting them. “If we hadn’t done that,” said Raposo, “we’d be really behind now.”
If that sounds appealing but you’re daunted by the expense of dozens of international trademark applications, there is a cost-effective optio: the Madrid Protocol. This international treaty offers a means of registering marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members. At present, 92 countries participate in the Madrid Protocol.
The Patent Cooperation Treaty (PCT) offers a similar mechanism for using a single application for protecting patents in multiple jurisdictions. The PCT assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries throughout the world
The United States became a member of the Berne Convention on March 1, 1989. It has been a member of the UCC since September 16, 1955. Generally, the works of an author who is a national or domiciliary of a country that is a member of these treaties or works first published in a member country or published within 30 days of first publication in a Berne Convention country can claim protection under the treaties. There are no formal requirements in the Berne Convention. Under the UCC, any formality in a national law can be satisfied by the use of a notice of copyright in the form and position specified in the UCC. A UCC notice should consist of the symbol © (C in a circle) accompanied by the year of first publication and the name of the copyright proprietor (example: © 2006 John Doe). This notice must be placed in such a manner and location as to give reasonable notice of the claim to copyright. Since the Berne Convention prohibits formal requirements that affect the “exercise and enjoyment” of the copyright, the United States changed its law on March 1, 1989, to make the use of a copyright notice optional. U.S. law, however, still provides certain advantages for use of a copyright notice; for example, the use of a copyright notice can defeat a defense of “innocent infringement.”
With these international mechanisms in place, there is no excuse for even a smaller company not to invest in its IP worldwide. (Fortunately, my firm can help with that!)