International expansion and growth

International Expansion and Growth Insights | Intellectual Property

Published on 23rd Oct 2019

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Expanding your brand and moving into new markets

Your brand may be your most important marketing tool and a valuable asset on your balance sheet. Managing and protecting this during a territorial expansion is key. You may have registered trademarks in one territory but that does not mean you will be clear to use them in another. The risks of expanding your brand without a strategy in place include being vulnerable to counterfeiting, accusations of trade mark infringement and missing key registration opportunities. Here are some things to think about to ensure your expansion strategy hits the mark.

  • Review your portfolio

Check which territories your trademarks are registered, what brands/logos are covered and what goods/services each registration includes to identify potential gaps in protection.

  • Clearance searches

Check who might have pre-existing rights in a trade mark in a local territory before launching in a new space. Conducting clearance searches that review local trade mark registers can reduce the risk of facing trade mark infringement proceedings. Where searches identify prior rights holders, there may be risk mitigation strategies to assist a smooth launch into a new territory.

  • File new applications

There are various routes to registration and an application strategy should be determined. If you are considering expanding in a number of territories, filing an international application could reduce the cost. However, filing national applications can allow more flexibility when it comes to your specification. Consider the pros and cos of each type of registration before proceeding.

  • Brexit

Consider the impact of Brexit on your trade mark strategy. Following Brexit day, EU trade mark registrations will no longer cover the UK. However, an equivalent UK right will be created. An EU application that has not achieved registration will not give rise to an equivalent right. Separate applications may need to be filed to manage this risk.

By taking steps to manage risks and maximise trade mark protection, you will pave the way for a successful brand launch in new markets.

  • Read more about top tips for international growth and expansion for US companies here.
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* This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

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