Subscribe

RSSAdd blog to your RSS reader

All Topics

Contact Us

212.451.2258

ADVERTISING@OLSHANLAW.COM

Trademark Fee Reductions Can Assist With More Effective Trademark Portfolio Management

In today’s global marketplace, it is more important than ever to make sure your brand is protected around the world. Failing to do so could prevent you from entering a key marketplace, or even worse, could allow an unscrupulous individual to create a business in another country that directly mimics your business. One of the first steps in protecting your brand is obtaining trademark protection in countries in which you do business or intend to do business. Unfortunately, this can be an expensive endeavor for brand owners as trademark protection is territorial and, with very few exceptions, must be handled on a country-by-country basis. Each country will have its own governmental filing fees, and the filings will generally need to be handled by an attorney who is licensed to practice in that country.

One of the most expensive jurisdictions in which to apply to register a trademark or maintain a trademark registration is the United Arab Emirates (“UAE”), which is roughly 10 times more expensive than in the United States.  The UAE has recently announced that it is reducing the filing fees for trademark applications and renewals by about 33%, which reduces the government filing fee for trademark applications from approximately $2725 to $1825 and renewals from approximately $3270 to $2370. While this is still much more expensive than the filing fees in other jurisdictions (and does not take attorneys’ fees into account), it will help reduce some of the cost of obtaining and maintaining trademark protection in a region that has become increasingly important for brand owners. Similarly, although trademark fees in China are not nearly as much as those in the UAE, the Chinese government recently announced a reduction in some of its fees for applications, renewals, and other trademark matters – for example, reducing the fees for new applications from 300 RMB per class to 270 RMB (if filed electronically) and the fees for renewals from 1000 RMB to 450 RMB (if filed electronically). 

In the United States, “common law” (unregistered) trademark rights are recognized through the use of a trademark. The United States is considered a “first-to-use” country, meaning that the first party to use a trademark will generally obtain rights in that trademark regardless of whether the mark is registered. While registration is not required for a valid trademark to exist in the United States, registration is still recommended because it will provide a brand owner with certain benefits and will put others on notice of the brand owner’s rights in the mark. Additionally, after five years of registration, a trademark in the United States can become “incontestable”, which means that there would be very limited grounds upon which any third party could attack the validity of the trademark.

In virtually every other country in the world, including the UAE and China, common law rights are not recognized, and a brand owner will not have any trademark rights (or will have very limited rights) without a trademark registration. Most other countries are considered “first-to-file” jurisdictions where the first to file an application to register a trademark is the party who will have rights in the trademark once it is registered. If a brand owner does not obtain registration for its trademark in these countries, the brand owner will find it extremely difficult to prevent infringements of its trademark. In addition, in the most extreme cases, a third party could obtain a trademark registration for the trademark under its own name and then bring an infringement action against the legitimate brand owner in that country. It is not uncommon for a brand owner to have to buy its own trademark from such a third party in order to clear the way for the brand owner to do business in that country.

Because of this, it is recommended that you seek the advice of legal counsel who can assist you in determining the jurisdictions in which you should obtain trademark protection to protect your brand, allow your business to grow, and minimize the potential of having to challenge the “trademark squatters” who may acquire trademark registrations for your brand. It is usually cost-prohibitive to obtain trademark registrations in all countries around the world at the same time, so this usually involves a tiered approach, where certain jurisdictions are given preference over others, and trademark applications are filed over a number of years. In this way, a brand owner can better manage its budget, while maximizing its protection.

Determining the jurisdictions in which a brand owner should obtain trademark protection and the importance of each jurisdiction to the brand owner’s business is not a one-size-fits-all proposition. Considerations include the nature of the business, the company budget for intellectual property protection, and a number of other factors. For example, a company that sells apparel or other products that are often counterfeited may want to focus on countries where counterfeiting is a problem, while a financial company may want to focus on those jurisdictions where it is likely to do business. A company that sells products would likely want trademark protection in those countries in which the products are manufactured.  

Keeping ahead of the infringers, counterfeiters, and “trademark squatters” can be a bit overwhelming, but it can be managed with the right guidance. It is never too late to review your trademarks and determine if there are any holes that should be filled. However, the earlier it is done, the better. Once a brand starts to get some media attention in the United States, for example, it is likely that third parties have already filed trademark applications in China for that brand’s trademark. The best way to avoid these problems is for a brand owner to be forward-thinking in its approach to trademark protection. 

TAKEAWAY: In this worldwide economy, it is important to protect your brand’s intellectual property throughout the world. Failure to do so could severely disadvantage a company from expanding and protecting its brand. China and the UAE (as a major marketplace in the Middle East) are often very important considerations for any brand looking toward its future. With the reduction in fees in these jurisdictions, it has just become more cost-effective for a brand to obtain protection in that market.

Back to Page