Challenges on Intellectual Property and Trademark Registration In Other Jurisdictions
The need to secure intellectual property and trademark registration has become essential as world economies continue to expand.
In the local business arena, the likes of conglomerate San Miguel Corporation and banking giant Bank of the Philippine Islands (BPI) went to great lengths to ensure the design and color of their company logos are protected by trademarks and related intellectual property laws.
Imagine the ramifications of having less established or even bogus financial companies use BPI’s logo to solicit investments if the latter’s trademark is not registered.
Here are challenges you can encounter with intellectual property and trademark registration:
Differences in Trademark Registration
Each country or jurisdiction has its own set of intellectual property laws and rules. A country’s IP legal system more often than not, differ from another country or jurisdiction. Not knowing the differences in the laws of the countries where you intend to file your trademark application and local nuisances concerning the registration process will likely give you headaches and will result in unnecessary additional costs.
Take the case of the stark difference in the trademark registration rules between economic rivals the United States and China. The United States, where its Patent and Trademark Office processes more than a million trademark applications a year, follows the “first-to-use” rule. Under the said principle, a brand belongs to the first person or company that used the same.
In contrast, China’s intellectual property and trademark registration laws follow the “first-to-file” rule, which grants protection to individuals and companies that registered their trademarks regardless whether someone else has been using the same – albeit unregistered – name or brand. Even if you are regarded as having initiated and popularized the mark, somebody else could claim ownership if he beats you in filing for the same.
More Complex Regulations
Intellectual property and trademark registration regulations do not get any easier from here particularly for companies venturing in foreign shores. It is important to know what words, terminologies, logos could be registered as trademarks in some countries but are not accepted in others.
Other countries have a more sophisticated trademark registration system that allows non-traditional trademarks i.e. sound, moving, and position marks while others do not. Japan, for instance, has a sophisticated and well-developed trademark system that allows the registration of sound as trademarks. On the other hand, sound marks are still not recognized in the Philippines.
Therefore, if you have a particular sound associated with your brand, you may protect it as a trademark in Japan like the HISAMITSU sound logo and INTEL sound logo. IN the Philippines however, these sounds are limited to copyright protection
Geographical Indication
Another challenge in intellectual property and trademark registration is knowing the exclusive geographical indication rights certain regions enjoy.
The European Union has more rigid IP and trade laws. Champagne is a classic example. The generic name of the exquisite wine synonymous to special celebrations is as exclusive as it gets. Any champagne made outside of the region of Champagne, France, is legally forbidden to be called and sold as champagne even if other products are very similar in terms of taste and content. As such, champagne produced in other countries is called sparkling wine.
What about your favourite Parmesan cheese?
The well-loved cheese has many brands in different countries. Food aficionados and international IP legal experts, however, are one in saying the term refers to the commercial version of the classic cheese that originated in Italy. The authentic Parmigiano Reggiano can only be sold as such if it is made in the Italian regions of Parma, Modena, and Reggio Emilia.
While these facts make sipping champagne or lavishing Parmesan cheese on your salad or pasta interesting, they could be legal nightmares for companies that plan to produce and sell champagne and Parmigiano Reggiano manufactured or produced outside the said regions.
Classification Woes
World Intellectual Property Organization member-states generally follow 45 classifications for goods and services – 34 types of goods and 11 types of services. But if you are thinking of taking your business to and securing trademarks in countries like Palau and Micronesia, be ready to study their respective classification system.
As with any business decision, it is important to have a reliable consultant who is adept in navigating the complexities of intellectual property and trademark registration in the Philippines and in other countries.
Save yourself the headache of going through the maze of international IP laws. Contact J. Ponce Law now. You can also visit our Linkedin Page here.