Businesses of all sizes are increasingly thinking internationally when launching new brands. Even smaller UK-based companies may sell, manufacture or promote their products across borders from an early stage.

So, if you are launching a new brand and have global ambitions, how should you get started on ensuring that your brand is protected, while keeping costs under control?

1. Checking for availability of your chosen brand

It would be very risky to launch a product under a new brand without first performing at least some checks for earlier identical or similar trade marks. However, carrying out full professional searches in every territory where you may trade could be prohibitively expensive.

A reasonable compromise is to have your attorney conduct full searches to check for earlier trade marks in a limited number of key markets, and then do more restricted searching, checking only for identical and near-identical trade marks, in territories of secondary importance.

While analysing the results, it’s worth bearing in mind that clearing a trade mark in multiple jurisdictions is a difficult task and it is likely that some risks will be identified. Your trade mark attorney will be able to assist in working out the degree of risk and suggesting any possible ways to mitigate or remove the risks identified.

2. Figure out where to spend your budget for maximum effect

Just as with searching, the cost of covering every possible territory where your goods/services may be sold will probably be prohibitive. You may therefore wish to prioritise obtaining protection in territories based on the following principles:

• Markets where your sales are highest, or where you expect the most growth.

These will probably be the highest priority.

• Territories where your goods are manufactured

This is important to prevent a third party registering a trade mark that could then be deployed to block your manufacturing/export of goods from that territory.

• Territories where copycats frequently apply to register overseas brands (known as “trade mark squatting”).

This is most often a problem in countries where the first entity to file a trade mark obtains the legal rights to the name, regardless of whether another entity has prior use. China is the most obvious example. If you fail to register your trade mark early on in China, instead waiting until after becoming established elsewhere, there is a strong chance that someone will have applied to register it before you, which can be very difficult to deal with.

3. Make use of the international priority system

After filing your first trade mark application for a given trade mark, you then have a period of six months within which further applications for the same trade mark and goods/services can be filed overseas and claim the same filing date as the original trade mark application. This means that costs can be staggered. It also allows you to wait until your first trade mark (usually an application in the UK) has been examined and published (and possibly even registered) before you sink further costs into applications for the same trade mark overseas.

If you need any advice on developing or managing your trade mark portfolio, please get in touch to speak to one of our attorneys.