Protecting Your Trademarks and Intellectual Property Abroad

Before taking your franchise abroad, carefully evaluate countries with loose trademark, trade secret, copyright, and patent protection laws. Countries like those referred to as the BRIC countries (Brazil, Russia, India, and China) remain challenging, and any franchisor needs to appreciate the lack of protection for U.S. intellectual property assets that still exists in those regions.

Organizations such as the World Intellectual Property Organization (WIPO) are working hard to provide worldwide access to intellectual property protections, systems, and policies. It's well worth your time to visit their website. You can start by searching the word "franchise."

Nevertheless, a franchisor is still at risk of being knocked off or copied without efficient or economical recourse. Consult with your attorney to evaluate the steps required to protect your intellectual property assets, including the timing and cost of registering your primary trademarks and other important intellectual property.

Because trademark laws in some countries grant trademark rights to the first party to file for trademark protection, trademark pirates may have already registered your brand name under your nose, hoping you will pay them to get it released to you. There are also region-wide conventions that you can consider to provide you with multi-country protections. Timing also is important because, in some cases, use of the trademark or patent before registration may preclude or diminish your ability to get the protections afforded by the law.

Although it may seem like a helpful suggestion, don't allow any franchisee to file for your trademark and patent protection in any country. You may find out too late that they - not you - own that name in their country.

Depending on what country you choose, you may need to be concerned with other laws that are not necessarily franchise-specific, but that may apply to your franchise transaction anyway. These include laws that prohibit certain unfair or uncompetitive practices, and agency laws that can be applied in some countries to protect a franchisee against termination and give the franchisee rights not contemplated by your franchise agreement.

 Joyce Mazero, a shareholder with Polsinelli PC, a law firm with more than 825 attorneys in 21 offices, is co-chair of its Global Franchise and Supply Network practice. Contact her at 214-661-5521 or jmazero@polsinelli.com. Michael Seid is managing director at MSA Worldwide. Contact him at 860-523-4257 or mseid@msaworldwide.com.