Setting up your business for international success

Earlier this year, attorneys from Wynnes attended the International Trademark Association Annual Meeting in Boston.

The conference boasts the largest attendance of Intellectual Property professionals from around the world, gathering to further their knowledge of international practices and network with hundreds of national and global IP firms.  This year marked their highest attendance to date.

With the APAA 2019 Council Meeting in Taipei around the corner, we are directing our focus towards outlining some of the key factors that can help or hinder Australian businesses expanding into overseas markets.

Dot your i’s and protect your TM’s

Taking your business in to an international market requires a lot of decision making, as there are many variables you must consider.  Although some decisions might not be integral to the success of your overseas expansion, you cannot leap into a new market without the right IP protection and market research for the regions you are entering.

Like many web-based companies, some brands are global from the beginning and should consider protecting their trade marks in their most profitable business regions.

Balancing cost with cover

Smaller companies do not have the budget to protect themselves across entire regions, such as Europe, South America or Asia.  Or perhaps the company has limited time and further market research is required in those regions in order to establish which countries are viable.  These scenarios are common and can be navigated by recognising the countries that will provide the most protection.

Every market is different, so it pays to do your market research and consider the most suitable commercial options in all regions.  Obtaining full coverage in a region is not always viable and there are more economoical options you may consider, such as:

• Germany is considered the heart of European trade for many industries.  Securing protection in Germany will provide some security in Europe, buying some more time for the company to continue their market research into other vital countries.  The German market is so integral for many businesses that some will not consider filing in Europe if they are unable to secure protection in Germany.
• Asia and the Middle East have a diverse range of technologically adept countries.  Countries like Japan, South Korea, Israel, Singapore and China are on the cutting edge of technology in many fields, while other countries in those regions are less advanced.
• Chile is considered one of South America’s most stable and prosperous countries, leading the list for competitiveness, income per capita, globalization and economic freedom, making it an ideal entry point into South America.
• Often a business can face opposition when registering a trade mark in a new country.  One of the key elements of support for your registration is providing prior evidence of use.  In countries such as India the registration process can be easier, as prior use of a trade mark in other countries (Australia) is accepted as evidence of use.
• Most African countries are more suited for high volume with small margin consumable, everyday products.

If you would like to begin your international market research, you will find some helpful resources on the Austrade website.

No trade mark? No investment.

Often companies will seek international investors or licensees to manage the distribution of their products in new countries.  Brand protection is likely one of the first topics investors will raise.  Investors are aware that a brand is not secure without control of their trade marks, which can greatly affect the value of a business.

If you are looking to franchise your business, your most valuable asset is your brand and you must protect it at all costs.  Without thorough trade mark protection, there is no franchise.

As a franchisor, you will also need to establish clear guidelines for the use of all brand assets.  The incorrect use of your trade marks by franchisees can cause your trade mark use to be reviewed and stripped.