Imagine this…

Your hard work has paid off – your brand is well-known in Singapore, and you are now looking to a wider, global market. The shocker: you cannot register your trade mark in your new target countries, as there are already other similar trade marks there. The bigger shocker: your brand name has also been translated or transliterated into the various local languages for use by existing companies. What do you do? 

How to turn your brand into a legacy

It is a myth to think that a successful brand needs no upkeep. In fact, this happens more often than you think – and does not just befall small businesses. Conglomerates and listed companies across industry sectors alike have also been 'victims' of their own success.  

Famous case in point: Apple’s iPad. Before Apple launched its new iPad in 2010, the "iPad" trade mark was already registered by Proview Technology in 10 countries, including China. Not wanting to give up the name, Apple fought hard to acquire this trade mark, ultimately settling the dispute at an eye-watering sum of US$60m¹.  

Closer to home, Company B, a successful F&B company from Singapore, took a different approach. Company B quickly grew into a household name for its quality products and game changing shopping experience at the time. Expanding into China, however, was a struggle – their Chinese trade mark was already taken there. Fortunately for Company B, they were able to strike a happy balance by using another Chinese trade mark that sounded just close enough to establish a link to the original brand name, securing its position in the China market for years to come. 

In both cases, Apple and Company B have had to compromise by paying up or giving up (the name). Here are three things you can you do to avoid having to settle later on, when expanding into new markets: 

1. Think distinctive 

Your trade mark filing strategy should support not just your branding and marketing needs, but also consider market rivals and copycats. Using a distinctive mark significantly strengthens your legal claim to your mark in the face of trade mark infringement and brand abuse, as it is easier to demonstrate that the other party was copying YOUR mark specifically, and not something common in the market. And always conduct a clearance search to ensure that your trade mark is registrable in all your markets of interest. 

2. Cover your bases by filing associated and defensive trade marks

Instead of registering just your main trade mark, consider registering a portfolio of associated trade marks and/or defensive trade marks as a strategic move to futureproof your brand. This will help you cover more ground when it comes to protecting your brand and its elements, and make it harder for others to leverage your brand. 

Filing associated trade marks refers to registering one mark in multiple classes that are broader than your company's business focus. For example, a bakery would naturally register their trade mark in Class 30 (foodstuffs) due to the nature of their business. But what they may also want to consider is registering their mark in Classes 5 and 31 to prevent their brand name from being used in association with drugs or animal foods. 

Filing defensive trade marks refers to registering multiple trademarks similar to your primary mark. One famous case to illustrate this is 'Haidilao vs. Hedilao' – two restaurants in different food categories – Haidilao is an established hotpot chain in China, and Hedilao serves Hunan specialties. Despite the two brand names being subtly similar not just in spelling but also in meaning, Haidilao ultimately lost in their trade mark dispute with Hedilao, and went on to register another 177 "names" to prevent any potential 'free-riding' of their brand in future². In another timeline, 'Hedilao' could easily have had been Haidilao’s defensive trade mark when it was first establishing its trade mark portfolio. 

(Note: Registration of associated trade marks and defensive trade marks shall meet the requirements defined in the local Trade Mark Act. The requirements may vary across jurisdictions.) 

3. Plan for a legacy

Plan ahead and plan big when it comes to developing your trade mark portfolio – where do you intend for your business to expand into eventually? Your trade mark strategy should factor that in. Company B’s journey could have been made much smoother if the company had anticipated and made allowances for global expansion at the start. Consider your trade mark portfolio strategically, rather than as a one-off registration.  

Trade mark filing strategy is as much a business issue as it is a legal one. It is unlikely that you would outsource your entire business strategy – so why not have in-house capability for your IP strategy as well, to maximise business outcomes? Ideally, you would want to work with an internal IP professional who understands your business intimately to make decisions on IP, who in turn works with an external trade mark legal professional to execute them effectively. Considering how this is a constant, iterative process that evolves with the business, it is definitely well worth the long-term investment. 

Not sure where to begin? Our beginner-friendly programme - Strategic Intellectual Property Management for Businesses will help you take charge of your own IP and business success today.

¹[Reuters] Apple pays $60 million to settle China iPad trademark dispute; [BBC News] Apple 'settles China iPad trademark dispute for $60m'

²[MS NEWS] Haidilao Loses Trademark Lawsuit To Hedilao, Registers 177 Other 'Names' To Prevent Free-Riding

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