Bulgarian, European or international brand?
Steve Jobs founded Apple in the 1970s. A few years later, Fortune magazine included him in its list of the 500 richest people in the world, and Jobs himself described his product as “the fastest and most powerful computer to fall into the hands of a vast number of people.”
Startups that can scale are the dream of entrepreneurs.
But rapid scaling can also carry risks from an intellectual property perspective.
Thus, a few years ago, the case of IKEA, which lost the opportunity to use its trademark in Indonesia because a local manufacturer had earlier rights to an identical sign, was notorious.
The problem comes from the principle of territoriality of trademarks, according to which the exclusive right to a trademark is valid only in the territory to which the registration relates.
Establishing an international brand, with brand protection all over the world, is a difficult and sometimes inexpedient task. The reasons for this are many – legal, financial, linguistic and even religious. If in some countries a trademark is associated with something positive, in other countries, on the contrary, it is quite possible that the brand will be associated with something negative and therefore rejected by consumers.
In practice, identical brands can exist in different countries completely conflict-free. However, this is not always the case.
The most common example of a rapidly scalable business model is software. The reasons for this are well known – the distribution of the product can quickly cover different countries. But if the company behind the product has only a national trademark registered, it will not be able to protect itself from infringement in other countries. Exclusive trademark rights are only valid in the territory to which the trademark registration applies.
Moreover, if an identical mark is registered in another country for the same goods or services, the company will not be allowed to offer the same goods or services in that country.
For startups with the potential to scale, this can be a significant problem. They have already invested in creating and promoting their brand, but only have the right to use it in a specific country.
That is why my advice is to register a European trademark immediately you start a business.
An EU registered trade mark has unitary character, which means that an EU trade mark applicant receives protection in all EU Member States at the same time, without being able to choose certain countries at random.
Further, the registration of an EU trademark is tied to significantly reduced costs compared to initiating proceedings in multiple individual EU Member States.
In other words, under a single registration procedure with a single authority – the European Union Intellectual Property Office – and on payment of a single state fee, you get protection throughout the European Union for 10 years from the date of filing of the European trade mark application.
However, if your business involves non-EU countries, you have two options – a national application in that country or an international trade mark registration.
In the first option, you submit an application to the national office of the country where protection will be sought. Most often, these are countries with great economic influence – USA, UK, Japan, India.
International registration provides protection for a mark in all member states of the Madrid Agreement and the Madrid Agreement Protocol.
This means that the term “international trademark” is not identical with the term “worldwide trademark”, since an international trademark provides protection in the countries of the Madrid Agreement and Protocol.
An application for international registration of a trade mark may be filed either on the basis of an application for registration of a national or European trade mark or on the basis of a trade mark already registered.
In conclusion, the nature of your business, and your plans for its development, are determinants of the decision where to protect the trademark.
Still, before you sign up, remember Apple’s history.