Protecting Your Trademark Abroad Before Market Entry

Overview

Trademark rights are territorial: a Chinese registration does not protect you abroad. Many countries are first-to-file, so an unregistered brand can be registered by someone else.

Key concepts

• Territoriality: protection only where the mark is registered.
• First-to-file: in most countries the earlier filing date wins.
• Madrid System: one filing through WIPO designating multiple members, each examining separately.
• Nice Classification: goods and services classes you must specify.

Steps

1. Decide target markets and the goods / services to protect.
2. Search national databases and WIPO’s Global Brand Database for prior rights.
3. Compare Madrid filings and national filings on coverage, cost and management.
4. File and respond to office actions in each country.
5. After registration, enrol in marketplace brand registries and monitor infringement.

Documents

• Mark representation and wording
• Goods / services list by Nice class
• Applicant details; Madrid filings need a home-country basic application or registration

Common limitations

• Some countries can cancel marks not used within a set period.
• Local-language transliterations need separate assessment.

Practical notes

Not legal advice. Patents, software copyright and trade secrets need separate strategies.

Official resources

• WIPO Madrid System
• China National Intellectual Property Administration