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Trademarking in other countries

Nov 2020
After filing applications for Taiwan trademarks registrations, many clients will pay regular attention to trademark-related information. During this time, we generally receive many enquiries about overseas trademarks. The reasons for which are due to the popularity of the internet, the increasing importance of intellectual property rights protection, and the exportation of one’s brand to other countries. In this era of information explosion, we need to pay more attention to the trademark applications in other countries (overseas).
First, we need to know why the trademark needs to be applied overseas. The reason is actually very simple: it is because trademarks are territorial – in other words, after you have filed an application for your trademark in and have it successfully registered locally, you will receive absolutely no protection in other countries! Although it sounds horrific, that is the absolute truth. As a result, this gave rise to the so-called overseas trademark applications.
The most common scenario encountered by trademark rights owners is that the brand – founded by the trademark applied in Taiwan – flourishes in Taiwan, however they are informed by downstream manufacturers or clients that the exact same brand appears in other countries albeit not belonging to the trademark rights owner. At this time, the client would be as anxious as a headless fly, going around for advice on what to do. At this point, apart from explaining the importance of trademark placement strategies, we can also provide further relevant assistance, for example retrieving trademark rights through lawful procedures and regaining their brand reputation in other countries.
However, apart from the backup and emergency measures above, we can also think of potential overseas targets when designing the trademark application. For example, if you have already thought of entering the EU or China when filing a trademark application in Taiwan, you could consider filing an EU and China trademark application whilst applying for a Taiwan trademark, even if you have doubts as to the importance of intellectual property rights. Is it worth filing an application at this time? From the above example, it is clear that such investment is incredibly worthwhile. Once the registration is approved, you will have at least 10 years of registered trademark rights (this differs between countries) and it can be extended indefinitely. The relevant fees are definitely more cost-effective than the effort and finances required to retrieve trademark rights in the future. Besides, it is well worth the price in terms of cost alone. Indeed, the example we have given is from a purely commercial perspective. From the perspective of protecting your treasured intellectual property, having a well-prepared trademark placement strategy for filing overseas trademarks can be invaluable!
Following the above, in this era of information explosion, you can search on the Internet for the various trademark application methods of different countries. But in the end of the day, only the people of the country will know their local intellectual property rights protection laws best. At this time, we will be your best choice. We have operating branches in various countries and international talents at your disposal, eliminating the obstacles to communication. We believe having a common language is very important to applicants. You can talk to us in the language you are most comfortable with, receive even more valuable advice that you are unaware of, focus on how to place and file applications for overseas trademarks in the most time and cost-effective way. This is the meaning of “time is money” – as you continue to expand your brand, we can offer you timely professional advice and placement strategy at the same time. With this win-win situation, what’s not to love?
COPYRIGHT BKIP 2020

Company information

BKIP Limited

1/F, 169 Gloucester Road, Hong Kong
(852) 3157 0065
tm@bkip.com.hk