INTERNATIONAL WINE TRADEMARKS: GROWING YOUR WINE BRANDS BEYOND THE BORDER

International demand for American wine continues to grow, with the Wine Institute reporting that wine exports revenue grew 7.6% between 2014 and 2015. Any winery considering crossing the border should be aware that their trademark rights are likely limited to the country or countries of registration and use. So, an American winery that has been proactive about securing rights to a wine name in the US will not have a claim to the name in Canada, or elsewhere outside the US.

A Quick Note on International Wine Law

Section 2(a) of the Trademark Act prohibits the registration of certain “geographical indications” in connection with wine (and spirits, but not beer), unless the wine actually originates in the related geographic place. These terms are governed by the Trade-Related Intellectual Property provisions of the General Agreement on Tariffs and Trade (“GATT”). So, for instance, nobody outside of Champagne, France can register any mark that includes the phrase CHAMPAGNE for a wine product in any country that is a member of GATT.

When Should a Winery Pursue

Foreign Trademark Rights?

The easy answer here is that filing early is almost always better, so as to get an early priority date in the foreign countries. This is especially the case if you have already filed an application for the same mark and goods/services in the US (or elsewhere), since you can make a priority claim to your prior application within 6 months after the earlier filing date. Another reason to file early is that most (if not all) foreign trademark offices do not require the showing of use of a mark in commerce that is required by US trademark law, making it somewhat easier to achieve a foreign registration.

The better (but perhaps less gratifying) answer is that it depends. The main issue for most companies likely relates to whether foreign trademarks fit their budget. Pursuing international and foreign trademarks tends to be quite a bit more expensive (by a factor of 4-5) than pursuing similar rights in the US. More on costs below.

How Can a US Company Secure

Foreign Trademark Rights?

There are two ways for a US company to pursue foreign trademark rights: direct filing in the foreign country through a foreign agent/attorney, or filing a single international application under the Madrid Protocol in several countries at once.

Direct Filing: Most trademark attorneys in the US have developed relationships with foreign trademark attorneys/agents, and can help facilitate foreign filings and will usually correspond directly with the foreign agent. For some countries, such as most South American and African countries (areas that tend to be more relevant for wine producers), international filing is not an option and so applications must be filed directly with a foreign agent/attorney. Canada is a special case, and US attorneys may directly file a trademark application at the Canadian Intellectual Property Office, so long as a Canadian correspondence address is included on the application. Direct filing is required if the country is not eligible for international filing, but might also be preferred in a situation where the company is only interested in filing in one or two countries/regions. Where a company is interested in seeking trademark registration in at least a few countries, it is often more cost effective to pursue such applications through a single international application.

International Filing: The Madrid Protocol is a system that facilitates the filing of trademark applications in multiple countries at once through a single application. Here is a complete list of the 98 countries where you can file an international trademark application: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf. As you can see, Canada is absent from the list for now.

An international trademark application may be filed at the United States Patent & Trademark Office. The filing fees will vary depending on the number of countries where the application is filed (you can calculate the filing fees here: http://www.wipo.int/madrid/en/fees/calculator.jsp).

Once the international application is filed, the application will be forwarded to each of the countries you selected for processing. Each country has its own standards for registrability and its own database of prior registrations, so it’s entirely possible that you will be approved for registration in one country, but rejected in another country.

Also, each country/region has its own policy for publishing your trademark, giving third parties an opportunity to challenge your registration. Applications in certain countries/regions tend to elicit more challenges than others. For example, we generally find that applications in the EU are more likely to be challenged by third parties, likely because an EU registration covers numerous countries.

Note: If one of the foreign applications stemming from your international application is refused, you (or your trademark attorney) will likely have to engage local counsel to prepare and file responses at the foreign country’s trademark office.

Other Quick Thoughts

If you are considering expanding into a foreign market, you should at least check to see whether there is any third party use of your brands in that foreign market.

If you find a problematic brand in a foreign market, you may be able to negotiate reciprocal agreements to allow each party to sell (and maybe even register) their brands in the respective countries.

There are some countries where it might be more imperative to secure trademark rights, such as China, so as to avoid having a third party (maybe even your business associate there) try to grab the rights for themselves and lock you into using their services.

Do try to take advantage of a priority claim to a US application (within 6 months of the US filing date) where possible.

Remember, you can always register your US registration with US Customs and Border Protection, and potentially keep infringing third party goods out of the country.

Conclusion

Going international with your trademark portfolio will help avoid costly headaches and struggles down the road. When your budget allows it, and your plans for crossing the border are close to coming to fruition, we recommend making international and foreign trademark registrations a priority.

Dan Christopherson (dan.christopherson@bevlaw.com) is an attorney at Lehrman Beverage Law, where he assists beer, wine, and spirits clients with trademarks, contracts, and federal and state compliance. Dan has been featured as a speaker on trademark and alcohol beverage law issues by the American Bar Association, the Brewers Association, and other prestigious organizations, has been published in Landslide Magazine and other trade publications, and has been cited as an expert in numerous trade and news publications. Dan is also the author of the beer law blog, DCBrewLaw.