Register Before You Ship: 6 Trademark Rules Before You Enter a Foreign Market

In July 2012, Apple wired $60 million to a struggling Chinese electronics company called Proview to end a dispute over a single word: iPad. Apple believed it had bought the worldwide rights to the name in 2009. A Chinese court disagreed, because the mainland registration had never actually been transferred, and Proview had been demanding sales bans and up to $2 billion in compensation.

The most valuable company on earth paid eight figures for a name it thought it already owned.

A trademark is a territorial right. The registration you hold at home protects your brand at home, and nowhere else, and in most of the world the brand belongs to whoever files first, not to whoever built it.

Our group was founded in Azagra in 1890 and today sells into more than 75 countries across eight active verticals, from wine and mineral water to real estate and hospitality. When you export under names that took generations to build, the brand is the asset, and the paperwork that protects it is not a legal formality. It is the first step of market entry. Here are the six rules we apply before a brand crosses a border.

Rule 1: Assume every new market is first-to-file

The United States is an unusual trademark system. Rights there can arise from use in commerce, so a company that sells first has a claim even without a registration. Most of the world does not work that way. China and many civil-law jurisdictions grant the right to the first party that files, regardless of who created the brand or who sells it.

That gap is the business model of the trademark squatter. Tesla found this out in China. A businessman named Zhan Baosheng had registered the Tesla name there in 2006, years before the carmaker arrived. In 2014 he sued, demanding that Tesla close its showrooms, service centers and superchargers, stop all sales and marketing, and pay 23.9 million yuan. Tesla settled in August 2014; Zhan agreed to let his marks be cancelled and handed over the domains tesla.cn and teslamotors.cn.

If you have not filed in a country, you should assume someone else can, and that the burden of proving bad faith will fall on you, in their courts, on their timeline.

Rule 2: File before the first sample, the first trade fair or the first distributor meeting

The moment of greatest exposure is not when you launch. It is when you start talking about launching. A trade fair booth, a distributor pitch deck or a sample shipment tells every attentive observer in that market exactly which name is about to become valuable.

The international system gives you a tool for this. Under the Paris Convention, once you file in your home country you have six months of priority: a filing in another member country within that window is treated as if it had been made on your original home filing date. That lets you file at home, start conversations, and still beat anyone who tries to register your name in between, as long as you file abroad before the six months run out.

The practical rule we follow is simple:

• Filing precedes exposure. No trade fair, sample or distributor conversation in a market until the application is at least filed there, or the home filing is less than six months old.
• The market entry budget includes the trademark line. It is a few thousand euros against the value of the brand, not an optional legal expense.
• Search before you file. A clearance search in the target market tells you whether the name is already taken before you print a single label.

Rule 3: Register the name the market will actually say

Consumers in a new market rarely use your name as you wrote it. They translate it, abbreviate it or give it a local sound. Whoever registers that local version controls the brand as the market actually knows it.

Penfolds is the case every wine exporter should study. Chinese consumers came to know the brand as Ben Fu, a transliteration Penfolds had not secured first. It took Treasury Wine Estates roughly a decade of litigation in China before its right to Ben Fu was confirmed in 2020. Michael Jordan fought a similar battle over his Chinese name against Qiaodan Sports. In December 2016 China's Supreme People's Court recognized his rights in the Chinese characters of his name, but upheld the company's right to use the romanized "Qiaodan."

Choose your local-language name yourself, test it with native speakers, and register it alongside your original mark before the market chooses one for you. In some markets that means registering more than one version: the transliteration, the translation and the logo.

Rule 4: Use Madrid for reach, and understand the dependency you are buying

For most exporters, the efficient route is the Madrid System, administered by the World Intellectual Property Organization. One application, in one language, with one set of fees, can designate protection in more than 130 countries.

The economics are reasonable. WIPO's basic fee is 653 Swiss francs for a black-and-white mark, or 903 in color, covering up to three classes, plus a fee for each country you designate, which in some countries is a flat 100 francs and in others a considerably higher individual fee. Registration runs for ten years and is renewed centrally.

What most owners miss is the fine print. For the first five years, an international registration depends on your home application or registration. If the home mark is refused, cancelled or successfully challenged in that period, every country that hangs from it can fall with it. That is known as central attack. You can transform the lost designations into national applications, but only within a limited window and at additional cost.

Two decisions follow from this:

• Make the home mark bulletproof before you build an international structure on top of it. A weak or overly broad home filing is a single point of failure.
• File nationally in the one or two markets that decide your future. For your most important market, a direct national filing through local counsel is worth the extra cost, because it stands on its own.

Choose classes with the future in mind: wine sits in Class 33, but a brand that may extend into events or hospitality should consider adjacent classes early.

Rule 5: The brand belongs to you, not to your distributor

The most common trademark disaster in export markets is not a stranger but a partner. A distributor who registers your brand in their own name holds the most valuable leverage in the relationship the day you want to change distributors.

Apple's iPad problem was a version of this: the deal it signed did not cover the entity that actually held the mark in China. Before you rely on a trademark in any market, confirm who legally holds each registration there, not who says they own it.

Every distribution agreement we sign should contain four protections:

• Acknowledgement of ownership. The distributor accepts that the marks, local-language names and logos belong exclusively to the brand owner.
• No filings. The distributor may not register the marks, confusingly similar marks, domain names or social media handles in any jurisdiction.
• Assignment obligation. Anything registered in breach must be transferred to the brand owner at no cost, on request and on termination.
• Registrations in your name. Where the distributor handles local filings for convenience, they are filed in the brand owner's name from day one.

Rule 6: Registration is the beginning, not the end

A registration that nobody watches is a certificate on a wall. Three habits turn it into protection.

Watch the registers. A trademark watching service flags new applications similar to your marks in your key markets, which gives you time to oppose them before they register, when opposition is cheaper than cancellation.

Record your marks with customs. In the United States, registered trademarks can be recorded with Customs and Border Protection so officers can detain counterfeit imports. The European Union offers an equivalent application for action, which turns border officers into part of your enforcement team.

Use it or risk losing it. Registrations are vulnerable to cancellation for non-use: in China and the United States after three years without genuine use, and in the European Union after five. Keep evidence of real use, market by market.

Key Takeaways

• Treat every new market as first-to-file. Your home registration protects you nowhere else, and in most of the world the right goes to whoever files first.
• File before the first trade fair, sample or distributor meeting, and use the Paris Convention's six-month priority window to stay ahead.
• Register the local-language name consumers will actually use. Penfolds spent about a decade securing Ben Fu in China.
• Use the Madrid System for reach, but remember the international registration depends on your home mark for five years. File nationally in the market that matters most.
• Every distribution agreement must confirm that the brand, local names, domains and handles belong to you, and oblige the distributor to assign anything filed in breach.
• After registering, watch the registers, record your marks with customs and keep evidence of genuine use to avoid non-use cancellation.

Frequently Asked Questions

Is my US trademark protected internationally?

No. A United States registration protects your mark only in the United States, and the same is true of a Spanish or EU registration within its own territory. To be protected abroad you must file in each country or region, either nationally or through the Madrid System, which lets you extend a home application or registration to more than 130 countries.

Can I register my trademark globally?

There is no single global trademark. The closest option is an international application under the Madrid System, which designates the specific member countries where you want protection and is then examined by each national office under its own rules.

How much does it cost to trademark internationally?

Through the Madrid System, WIPO's basic fee is 653 Swiss francs for a black-and-white mark, or 903 in color, covering up to three classes, plus a fee for each designated country. Some countries charge a flat 100 franc complementary fee, while others charge higher individual fees, and professional fees for clearance searches and local counsel come on top. For a handful of key markets, most exporters should budget a few thousand euros, which is small next to the cost of buying a brand back.

What is the Madrid Protocol for trademark registration?

The Madrid Protocol is the treaty behind the Madrid System, run by WIPO. It lets a brand owner who has filed or registered a mark in a member country submit one international application, in one language and with one set of fees, designating protection in other members. Registrations last ten years, but for the first five they depend on the home mark.

What countries are covered under the Madrid Protocol?

The Madrid System covers more than 130 countries, including the United States, the European Union, the United Kingdom, China, Japan, Mexico, Brazil and Canada. Membership keeps growing, and not every country has joined, so check WIPO's current member list for each target market before you choose between an international and a national filing.

One thing to do this week

List the three foreign markets that matter most to your business over the next five years. For each one, search the national trademark register for your brand name and its most likely local-language version, and write down who, if anyone, already holds them. If the answer surprises you, you have just found the most urgent line in your export plan.

Explore the eight businesses of Manzanos Enterprises, and for the decisions that surround this one, read how to enter a new international market, the seven questions before you choose an international distributor and why heritage is a moat you cannot buy.