How Tech Startups Should Plan Trademark Protection for International Growth

A technology startup can become international remarkably quickly.

A Canadian SaaS company can acquire U.S. customers without opening an American office. A U.S. software startup can begin selling to Canadian customers almost immediately. An app can attract users from multiple countries shortly after launch.

Trademark protection does not automatically expand with the business.

Trademark rights are generally territorial. Protecting your startup in one country does not automatically protect the brand in another.

That makes international trademark protection an important part of a startup’s growth strategy.

There Is No Worldwide Trademark Registration

One common misconception is that a business can obtain a single “international trademark” covering the entire world.

There is no such registration.

A Canadian trademark registration provides rights in Canada. A US trademark registration provides protection under U.S. law. The European Union, United Kingdom, and other jurisdictions have their own trademark systems.

A startup planning international expansion therefore needs to decide where trademark protection actually matters.

Which Countries Should Your Startup Prioritize?

Most startups do not need to register their trademark everywhere.

International trademark registration should follow the company’s actual and reasonably anticipated commercial strategy.

Consider where your customers are located; you expect significant future revenue; your products will be sold or manufactured; important distributors or licensees operate; major competitors are located; and expansion is realistically planned.

For example, a Canadian technology startup targeting American customers may reasonably prioritize both Canadian trademark registration and US trademark registration.

Similarly, a U.S. startup planning to expand north of the border should not assume that its U.S. registration protects the brand in Canada.

A company planning significant European expansion may consider EU trademark registration, which provides a single registration covering all EU member states.

The United Kingdom is no longer covered by new EU trademark registrations following Brexit. Businesses entering the UK market should therefore consider separate UK trademark registration.

For startups expanding beyond North America and Europe, other commercially important markets may include China, Japan, South Korea, India, Brazil, Mexico, Turkey, Australia, and the United Arab Emirates. The right countries to prioritize will depend on where the startup sells, manufactures, licenses, attracts customers, or expects to expand.

China deserves particular attention. It may be an important trademark market for a company manufacturing products there, even if China is not yet a major customer market. China operates largely on a first-to-file system, making early China trademark registration particularly important. Trademark squatting and Chinese-language versions of foreign brands can create additional risks, which we discuss in our guide, Why You Should Register a Trademark in China Before It’s Too Late.

There is no standard list that applies to every startup. International trademark protection should follow the company’s actual business model and realistic expansion plans.

Check Trademark Availability in Each Important Market

A trademark that appears available in one country may not be available in another.

A Canadian or U.S. trademark search cannot tell you whether someone has earlier conflicting rights in China, Japan, South Korea, India, Brazil, Mexico, Turkey, Australia, the United Arab Emirates, the European Union, the United Kingdom, or another important market.

Trademark availability should therefore be assessed separately in each jurisdiction where protection is commercially important.

Searching in China requires additional care because China uses its own subclassification system and potentially relevant Chinese-language marks should also be considered. Our guide to conducting a China trademark search explains these issues in more detail.

Before entering an important new country, check trademark availability there.

This is particularly important before:

• announcing an international launch;
• appointing distributors or licensees;
• investing heavily in local advertising;
• purchasing expensive country-specific domains;
• entering major local contracts; or
• committing substantial resources to the new market.

For preliminary research, our guide to the best free trademark search tools covers major trademark databases in the United States, Canada, the European Union, the United Kingdom, Australia, and other jurisdictions.

TRADEMARK ANGEL also offers a Free Initial Trademark Search and Assessment to help identify obvious potential conflicts before you invest heavily in a proposed brand.

Choose the Right Filing Strategy for Each Country

International trademark protection can be obtained through direct national or regional applications or, in some circumstances, through the Madrid System.

At TRADEMARK ANGEL, we generally prefer direct national or regional filings when they provide greater flexibility and make sense for the countries involved.

One important limitation of the Madrid System is that an international registration remains dependent on its underlying “base” application or registration for the first five years. If the base application or registration is refused, withdrawn, cancelled, or restricted during this dependency period, the international registration may also be affected. This is commonly referred to as a central attack.

This risk can be particularly relevant when a U.S. or Canadian application is used as the base. U.S. and Canadian trademark offices have their own requirements and practices for describing goods and services, and objections, amendments, or limitations to the base application can have consequences for the international registration.

For these reasons, we do not automatically recommend the Madrid System simply because a business wants protection in several countries. Direct national or regional applications often provide greater independence and flexibility.

The best international trademark strategy should be determined according to the particular countries involved, the business’s expansion plans, and the nature of the underlying trademark application.

Why You Should Plan Before Expanding

Trademark conflicts can become significantly more expensive to resolve after a startup has already entered the market.

Imagine that your startup has operated successfully under the same name for several years and now decides to enter an important new country.

You translate the website, hire local employees, advertise the product, approach distributors, and start attracting customers.

Then you discover that another company already has earlier rights to a confusingly similar trademark in that country.

The result could be a forced rebrand in that market, an opposition to your trademark application, a negotiated coexistence arrangement, or a dispute over your right to continue using the name.

Searching and filing earlier may identify these problems before substantial expansion costs are incurred.

International Trademark Rights Can Matter to Investors

Trademark strategy can also become important during fundraising, investment, or acquisition due diligence.

Investors may want to know whether the company owns its primary brand, where it is registered, which applications are pending, whether important markets remain unprotected, and whether third parties have challenged the trademark.

This does not mean a startup should indiscriminately register its trademark in dozens of countries.

A startup generating most of its revenue in Canada and the United States may have little reason to immediately register in 30 unrelated markets.

Conversely, a company preparing to enter the EU, UK, China, or another important market should not assume that its North American trademark registrations will protect it there.

The objective is not to collect registrations. It is to protect the brand in the markets that matter to the business.

Build Trademark Protection Around Your Growth Strategy

International trademark planning should be proactive.

Before entering an important market:

1. Check whether the brand appears available.
2. Decide whether that market is commercially important enough to justify registration.
3. Determine the most appropriate filing strategy for that country or region.
4. File early enough to reduce the risk of conflicting rights arising.
5. Review your trademark strategy as the startup expands.

Trademark protection should follow the business—not random geography.

Planning international growth? TRADEMARK ANGEL assists businesses with trademark registration in more than 100 countries.

We regularly help clients protect their trademarks in major markets including United States, Canada, European Union, United Kingdom, China, Japan, South Korea, India, Brazil, Australia, Mexico, Turkey, the United Arab Emirates, Saudi Arabia and many other jurisdictions.

Start with our Free Initial Trademark Search and Assessment to discuss the markets that matter to your business.