29.08.2023
Before your company enters new markets, it's important to ensure that appropriate preliminary measures for your intellectual property (IP) rights have been taken. Sanna Häikiö, Head of Kolster Legal, provides tips for those looking to expand internationally.
1. Develop a Solid IP Strategy
As part of your internationalization plan, it is recommended for your company to create an IP strategy that aligns with your business strategy and is updated as your business evolves.
Firstly, assess the actions – such as registrations and monitoring – that are essential in the target market for your business. Secondly, consider the implementation and plan what, how, and when protection is necessary in the target country.
2. Secure Your IP Rights Before Commencing Marketing
When expanding your company's business to new market areas, start marketing only after all relevant actions for your IP rights have been taken. Consult with experts in advance to understand possible unique features of the country's patent, trademark, design, and copyright laws and regulations. Identify risks and ascertain your freedom of operation.
Also, evaluate potential IP licensing opportunities whether to license your IP forward, to what extent, and under what conditions. Without proper monitoring of exclusivity, investment in IP protection might be wasted. Thus, it's important to consider how your company will monitor the market, potential product imitations, competitors, and the benefits of protection. What actions will be taken if counterfeiting or other abuses are detected?
3. Invest in preliminary searches
Various preliminary search activities investigate risks related to IP rights registration, usage, and freedom to operate in the target market. Proper preliminary searches also provide valuable information to support potential follow-up measures for the IP strategy. For instance, without thorough preliminary search on trademarks, there's a risk of infringing upon another party's previously protected mark or trade name in the target market, or your trademark application failing, leading to wasted investment in protection.
Preliminary searches go beyond simple online searching; it's advisable to involve IP experts who have expertise, experience, and access to industry databases and services.
4. Gather Evidence of the Use of Your Trademark in the Target Market
It's strongly recommended to register trademarks in countries where your company is expanding. Registration should be done well in advance of starting marketing or sales in the target market. This also applies to domain names, i.e., your company's website addresses.
Later collecting evidence of the use of your trademark in the target market is a crucial part of defending trademark registrations internationally. It's also important to consider the unique features of the target market. For example, if you register your trademark in China but don't use it as a trademark there, you might lose it under certain conditions. Any interested party, such as competitor is allowed to a petition for the cancellation or invalidation of an existing trademark registration. And You can lose the registration if you can't file evidence of the adequate use of your trademark within three years from the registration date.
Therefore, it's vital to use your trademark in the target market and retain visible proof, such as marketing and exhibition materials, and receipts. Alongside registering intangible rights, actively monitoring their enforcement is worthwhile. Failure to address abuses could dilute the benefits of protection.
5. Consider Localization When Necessary
On certain target markets, localizing your company's trademarks and domain names by registering them in the local language is crucial. Similarly, ensure that the meanings of words used in trademarks or domain names align with the culture and don't carry offensive connotations in the target market.
6. Choose Reliable Partners
As your company expands internationally, the need to collaborate with distributors or other partners often becomes essential. Select partners carefully, verify their backgrounds and references. Agreements, such as non-disclosure-, cooperation-, distribution-, or licensing agreements, should be prepared with competent professionals. Well-drafted agreements and clear mutual rules reduce risks and prevent disputes.
