Recently a Chinese court issued yet another blow to the notion that your brand is protected worldwide once you file a trademark in your home country.
Let me tell you the story.
Have you ever heard of Michael Jordan? Yes, that world-renowned basketball player who won a gazillion rings in the ‘80s and ‘90s and is still considered one of the best basketball players. Yes, that one. I am even willing to bet that just about everyone knows who Michael Jordan is. Well, in 2012 Jordan sued Qiaodan Sports Co. Ltd, a Chinese sports company, for trademark infringement. (“Qiaodan” is a Mandarin transliteration of “Jordan.”
In this lawsuit, Michael Jordan claimed that Qiaodan took his name and his playing jersey number, “23,” and created a look-alike replica of the “Jumpman” logo used by Nike to mislead customers into thinking that Michael Jordan was behind its products. However, the Chinese court disagreed. Qiaodan was allowed to continue the look-alike logo. Below are the pictures of the two logos. So what do you think?
However, before you think that only happens outside the U.S., think again. Currently, there is a case pending in federal court of a well-known international ice cream maker who is fighting for their right to use their brand in the U.S. Books and newspaper articles, in both Mexico and the U.S., have been written about this company. Yet, the owners are spending their time and energy fighting in court for their brand instead of focusing on expanding their business.
So yes, it is important to protect your brand (i.e., your intellectual assets). However, just like with anything, that touches multiple legal jurisdictions; it is also important to plan this protection. Remember, the laws are different in every country. In the U.S., the priority is given to those who register the mark, while in most Latin American countries priority is given to those who first use the mark.
I know that I am discussing big-name brands, but everyone starts small. Everyone starts with one customer. And by no means am I advocating that you should go drive yourself crazy and start contacting lawyers to trademark your mark in every country in the world. (That would cost you a small fortune.) What I am advocating is that when you write out your three-, five-, seven-year plan, add a little section, which deals with your legal plans. In that section, consider where you would like to be in three, five, and seven years from now. If that includes an expansion of your brand outside your home country, then add a little note to determine when the appropriate time is to plan the expansion of the legal protection of your mark as well.
Bite-Size Legal Tip: Just because your brand is legally protected in your home country doesn’t mean it is protected abroad. Make sure to protect your brand in every country that is economically important for your business.