Trade mark strategy for Asian brands going global

First to file is the rule almost everywhere

Of the ten LegalMatrix jurisdictions, only the United States grants trade mark rights primarily through use; Australia and New Zealand weigh prior use but register on filing; the rest are first to file. The practical consequence for a brand expanding from Asia is that the first party to file in the new market usually wins, regardless of who used the mark first at home. Pre-emptive filings by distributors, former partners and professional squatters are common in mainland China, and occur in Taiwan, Japan and elsewhere. The remedy, opposition or invalidation on bad-faith grounds, is slower and more expensive than filing first.

Choose the home base and the priority window

A first filing in a Paris Convention or WTO member starts a six-month priority window within which filings in other members take the earlier date. Use it: file at home (IPOS, IPD, JPO or TIPO), then file abroad within six months claiming priority, and the foreign applications are treated as filed on the home date. For a Taiwanese brand the base matters more because Taiwan is outside the Madrid system; a Singapore or Hong Kong subsidiary, or a direct national filing in each target country, becomes the route. Hong Kong was also outside Madrid at the review date, so Hong Kong-based brands typically use a national filing in each country or a Singapore base.

Madrid Protocol or national filings

The Madrid Protocol lets an applicant with a base application in a member country file one international application designating other members, in one language, with one fee schedule. Of the LegalMatrix jurisdictions, Singapore, Japan, the United States, Canada, Australia, New Zealand and the United Kingdom are members; the EU trade mark (covering Malta) can be designated; Taiwan and Hong Kong cannot. Madrid is efficient for a brand filing in five or more member countries with a stable specification. Its drawbacks are central attack (if the base application fails within five years the international registration falls with it, though it can be transformed into national filings), and the fact that each designated office still examines under its own law, so a specification acceptable in Singapore may draw an objection in the United States, where descriptions are examined strictly. National filings through local agents cost more per country but allow the specification to be tuned to each office and avoid central attack. Many brands use both: Madrid for the long tail, national filings for the key markets.

Scripts, transliterations and translations

An Asian brand usually exists in two or more forms: a Latin-script word mark, a Chinese-character or kana version, and a logo. File the forms customers will actually use in each market. In Japan, similarity is assessed on sound as well as appearance, so a katakana transliteration protects against confusingly similar sound-alikes; in Taiwan and mainland China, a Chinese-character version prevents a third party from registering the transliteration consumers adopt. In Western markets, check that the Latin-script mark has no unfortunate meaning or an existing conflict in English, and consider whether the logo should be filed in colour or black and white (black and white generally covers all colours in most offices). A series application in Hong Kong, Singapore and the United Kingdom can cover minor variants in one filing.

Specification and classes

Decide what the brand will be used for in each market over the next five years, because every office allows a registration to be removed for non-use after three years (Japan, Canada, Australia, New Zealand, Hong Kong, Taiwan) or five years (Singapore, the United Kingdom, Malta and EU marks, and the United States through the Section 8 declaration). Over-wide specifications waste fees and invite partial revocation; too-narrow ones leave room for a competitor in an adjacent class. Use each office's pre-approved descriptions where that lowers the fee or speeds examination (Singapore, New Zealand, Australia) and expect the USPTO to refuse class headings.

Clearance searching should precede every filing and should go beyond identical marks. Each office's search tool finds identical and similar marks on its own register; a brand expanding into six markets needs six searches, plus a check of the EU register for Malta and of common law use in the United States, where an unregistered prior user can block a registration. The written opinion that accompanies a LegalMatrix search sets out the conflicts found, the likelihood of objection and the specification that avoids them, so that the decision to file, adapt or rename is taken on evidence before fees are spent.

Timing against the launch

Registration timelines differ by an order of magnitude: approximately three to four months in the United Kingdom, six to twelve months in Singapore, Hong Kong, Japan, Taiwan, Malta and New Zealand, eight to twelve in Australia, twelve to eighteen in the United States and eighteen to thirty-six in Canada. File the key markets first and before any public announcement, since publicity attracts squatters. A clearance search before filing avoids paying to launch a brand that will be opposed; the LegalMatrix trade mark search and filing product delivers the search, opinion and filing per class per jurisdiction, with a registered agent or attorney signing off in each office.

Maintaining the portfolio

Record the brand on a single register with renewal dates (ten years everywhere, with the US Section 8 declaration between the fifth and sixth years), use-vulnerability dates, agents of record and licence recordals. Record assignments when IP moves into a holding company, license the mark to distributors on controlled terms (quality control keeps the registration valid), and watch the registers for conflicting applications in the key markets. GoGoTrust's IP register and LegalMatrix's renewal diary cover this for companies they administer.