Key Takeaways

  • International trademark infringement occurs when a registered mark is violated in a foreign country, and protections are territorial, not global.
  • U.S. trademarks do not automatically extend abroad; businesses must register in each target country or use systems like the Madrid Protocol for broader coverage.
  • Remedies for infringement abroad include cease-and-desist letters, litigation in foreign courts, and working with local counsel, but litigation can be costly and should be weighed against business impact.
  • Border protections such as registering trademarks with U.S. Customs and Border Protection (CBP) help stop counterfeit goods from entering the U.S. market.
  • Proactive measures like registering transliterations, monitoring marketplaces, and using global enforcement networks are key to protecting brands internationally.
  • International treaties (Madrid Protocol, Paris Convention, TRIPS) provide streamlined options but still rely on local enforcement mechanisms.

The iPhone and Trademark Infringement

International trademark infringement occurs when someone violates the rights of a trademark holder in another country.

In one infringement case, Apple sued Samsung for infringing on their design for the iPad and iPhone and using the design for the Samsung S 4G. The case took place in the United Kingdom, and the judge ruled against Apple. Apple requested that the court issue an order that would have prevented Samsung from selling their smartphone in the United States. They also wanted punitive and actual damages, and a ruling that Samsung had willfully infringed on their design. 

In his ruling, Judge Colin Birss found against Apple because Samsung's smartphone did not have the subtle, simplistic design for which Apple products are known. As a result of losing the lawsuit, Apple was required to publish an announcement on its United Kingdom website that absolved Samsung of the claimed infringement. This notice had to remain on the website for six months. Apple had to publish this same notice in magazines and newspapers to help restore the reputation of Samsung.

Understanding International Trademark Infringement

International trademark infringement arises when a company or individual uses a protected mark without authorization in a foreign jurisdiction. Because trademark law is territorial, a U.S. registration will not protect a brand in France, China, or Brazil unless the owner also registers in those countries or through a recognized treaty system. This gap in protection means businesses may face infringers who exploit their goodwill abroad, selling counterfeit goods, operating under confusingly similar brand names, or using logos that mislead international consumers.

Enforcement can be complex. Each country has its own legal standards for determining infringement, and courts may interpret the likelihood of confusion differently. In some markets, especially those with weaker enforcement regimes, brand owners may struggle to obtain meaningful remedies. This underscores the importance of forward-looking brand protection strategies before entering global markets.

How to Protect Intellectual Property Rights (IPR) Overseas

There are several easy and affordable steps that small companies can use to protect their intellectual property rights overseas, including:

  • Developing a PR strategy with the help of an attorney.
  • Using detailed language in subcontracting and licensing contracts.
  • Fully researching potential partners in foreign countries.
  • Making sure that Customs and Border Protections has recorded US copyrights and trademarks.
  • Securing copyrights, patents, and trademarks in important foreign markets.

A patent or trademark will only give you territorial rights, meaning your intellectual property is only protected in the country where registration occurred. This means that United States trademarks and patents won't protect your IP in other countries. You should contact the intellectual property offices in individual countries to discover what protections they offer and how to complete the application process. You can find contact information for IP offices around the globe on the World Intellectual Property Office website.

Thanks to the Patent Cooperation Treaty (PCT), it's easy to file patents in several countries. By filing a single application with the United States Patent and Trademark Offices (USPTO), you can receive patent protection in as many as 143 countries. You can find more information about filing international patents on the USPTO website.

Under the original rules of the Madrid Protocol, you can receive trademark protection in 84 countries with a single USPTO registration application. In April 2014, the Madrid Protocol was expanded to provide protections in 92 countries. The USPTO website also has information about obtaining international trademark protections under the Madrid Protocol.

It may be a good idea to register transliterations when applying for a trademark. Transliterations are words written in characters from different alphabets.

There are several benefits to registering your intellectual property. For example, even though copyright registration is not required in the majority of countries, registration will provide you with proof of ownership, which can be valuable in a court case.

The United States has developed relationships with other countries for the express purpose of protecting intellectual property rights. With these relationships in place, each country recognizes the IP rights of the other's citizens. However, because the US has not been able to establish this sort of relationship with every country in the world, it's important to learn which countries will automatically recognize your IP rights and which won't.

If a company believes that a trademark — which can be a phrase, word, or symbol — would help improve the value of their brand in another country, they should consider registering their trademark to protect their rights and to reduce the risk of international trademark infringement. Companies must be able to control their brand globally so that their valuable intellectual property isn't used without their approval.

Before you attempt to register a trademark outside of the United States, you need to understand every country's individual trademark regulations. After you've registered your trademark in your home country, you should consider registering in every country that may be important to your business. To register a trademark internationally, you should consider hiring a patent attorney for assistance. You could also apply for a Community Trademark (CTM). With a CTM, you'll will be able to use one application and pay one fee to register in every country in the European Union.

International Treaties and Filing Systems

Several international treaties make it easier for businesses to secure trademark protections abroad:

  • Madrid Protocol: Allows applicants to file a single international application through the World Intellectual Property Organization (WIPO), designating over 100 member countries for protection. Each country decides whether to grant or deny protection based on its own laws.
  • Paris Convention: Gives applicants a six-month “priority period” to file in other member countries after filing in their home jurisdiction, preserving the original filing date.
  • TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights): Establishes minimum standards of IP protection that World Trade Organization members must adopt, providing a baseline for international enforcement.

These systems do not create global trademarks but help streamline the process and reduce costs compared to filing separately in every jurisdiction.

Responding to International Trademark Infringement

If a business discovers its trademark is being infringed in another country, it should act quickly:

  1. Consult U.S. counsel with international experience. Many trademark attorneys work with foreign affiliates and can advise on strategy.
  2. Send cease-and-desist letters. Sometimes infringers may stop once they receive notice from counsel.
  3. Work with local lawyers. Litigation or administrative actions are typically handled under the laws of the country where infringement occurs.
  4. Assess business impact before litigating. International lawsuits can be costly, and minor infringements that do not affect revenue may not be worth pursuing.
  5. Consider border measures. Filing with U.S. CBP can prevent counterfeit imports, while many countries offer similar customs recordation systems.

Preventive Strategies for Global Brand Protection

Proactive steps are critical in minimizing international trademark infringement:

  • File early in key markets. Register trademarks in countries where you plan to do business or where counterfeiting is common.
  • Register transliterations and local-language versions. This helps prevent infringers from exploiting brand names by using foreign characters.
  • Monitor marketplaces and online platforms. Counterfeits often appear in e-commerce first.
  • Leverage international enforcement networks. Organizations like INTA (International Trademark Association) and WIPO offer resources for cross-border disputes.
  • Develop a global IP strategy. Work with legal counsel to prioritize markets, budget for filings, and establish enforcement protocols before problems arise.

Frequently Asked Questions

  1. Do U.S. trademarks protect me internationally? No. Trademark rights are territorial. A U.S. registration does not stop infringement abroad unless you also register in foreign jurisdictions or through systems like the Madrid Protocol.
  2. What should I do if my trademark is infringed in another country? Start by consulting with an attorney experienced in international trademark law. Options include cease-and-desist letters, hiring local counsel, or pursuing litigation abroad.
  3. How can I prevent international infringement? Proactively register trademarks in important markets, including transliterations in local languages, and monitor global marketplaces for potential infringers.
  4. What treaties help with international protection? The Madrid Protocol, Paris Convention, and TRIPS Agreement make filing abroad easier and establish minimum protections, but enforcement still depends on local law.
  5. Can customs help prevent counterfeits? Yes. In the U.S., you can record trademarks with Customs and Border Protection to stop counterfeit imports. Many other countries have similar programs.

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