international trade mark rights warning

Friday 03 October 2014

Channel Islands business looking to expand overseas should consider their trade mark rights, an intellectual property expert has warned.

The Director of Intellectual Property at Collas Crill, David Evans, has warned that trade mark rights are territorial and, as such, a name that can be used or registered in one country is not necessarily able to be used outside of that country.

He said with many local businesses looking ever further afield for new clients, it was important that they ensured they were able to use an existing name in these countries. 

"We have recently seen a number of Channel Island businesses receiving notifications of potential infringement because the use of their own name conflicted with other names registered in different jurisdictions,” he said. 

"It should be noted that even marketing into different countries carries the same risks and a physical presence is not a pre-requisite for infringement. This also means that web sites operated locally may fall foul of prior rights if they are selling to customers in other countries. 

Mr Evans advised all businesses to look at their customer base - and their non-local marketing - and recommended they should, in all instances, obtain the relevant trade marks in any country they wished to do business.

He concluded: “Trade mark registration is the only way to ensure that your name is able to be used and protected in those countries where you operate, without the need to be wondering whether your name infringes on someone else's rights."