Confusion about the scope of intellectual property protection
If an intellectual property such as an invention is registered within the territory of one country, is it protected in other countries? The answer is ‘No’ but this is a very common mistake for SMEs, innovators, and startups recently joining the business market.
When registering trademarks, inventions, and industrial designs according to the traditional filing method, such marks, inventions and designs will only have the scope of protection in the country in which the applicant applies for registration, not in effect globally.
For global registration, the applicant needs to file a separate application for each country that wishes to protect or register under international treaties and conventions that allow the protection of intellectual property in many countries simultaneously, such as the Madrid Protocol for trademarks, the PCT Treaty for inventions, or the Hague Agreement for industrial designs, etc.
Living and working in a country that is a part of many global intellectual property treaties provides many advantages, reflected in the unlimited options that the business can take to protect its IP assets. With a single application, and a single payment, the business can obtain protection for their IP in various countries across the world, up to hundreds of countries.
Confusion in the scope of protection, how to solve it?
If enterprises only register for intellectual property protection in their starting country, it is difficult to prevent enterprises in other countries from stealing such intellectual property such as trademarks, and processes (patents), bottle design (industrial design), etc. and apply to their own business. This is especially evident for countries that follow the first-to-file principle because if they follow the first-to-use principle, there will still be a chance to argue to reclaim their interest.
Currently, this case is rare in the market because a small business, even with a trademark registration, will hardly have the attraction to be stolen by foreign-sized enterprises (from the view of a small enterprise in a small country against large enterprise in big countries). In contrast, large enterprises usually know quite well about intellectual property law and the scope of protection between countries, so they have long registered for the protection of international trademarks, inventions, and designs.
For businesses of great size, their honor and reputation are the most important, so they will certainly not commit acts of intellectual property theft, whether lawful or illegal and make every effort to extinguish scandals such as IP infringement as quickly as possible.
Due to the complicated business relationship, sometimes, enterprises will not learn too deeply about intellectual property, thus inadvertently violating the law on intellectual property of other countries.
In that case, the enterprise should negotiate with the denouncing party after thoroughly understanding the information about the infringing property, the infringing act and the certificate of registration for the protection of their intellectual property, to avoid the case being wrongly accused of violation without robust evidence.
If it is true that the enterprise has inadvertently infringed on intellectual property, it is necessary to cooperate in good faith to solve the case. For trademarks and brands, they will usually be required to remove or change their name and logo. For inventions, both parties can consider reaching a cooperation agreement to transfer the right to use the invention.
AAA IPRIGHT – Global IP – Global Trademark Registration
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