The A to Z of registering trademarks for expanding abroad
What to know before registering a trademark, how trademark systems differ by country, and how to check your trademarks and build an IP portfolio before you expand.
Irene Lee4 min read
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Trademark systems differ by country. Which one applies to your business?
Trademark registration is one of the first things to understand once you start a business. It’s the legal mechanism that protects your brand not only at home but abroad too.
In this post, we look at the difference between first-to-file and first-to-use trademark systems and which countries use each. As the names suggest, the two systems decide who gets the rights to a trademark: the first to register it or the first to use it.
Key terms
- First-to-file: ownership goes to the company or individual that first registers the trademark with the authorities.
- First-to-use: ownership goes to the company or individual that first uses the trademark.
Understanding the different systems helps you minimize damage from problems such as intellectual property (IP) and trademark infringement, and prepare the most important, essential pieces for protecting your brand’s value and growing your business.
First-to-file
Ownership goes to the individual or company that first registers the trademark with the patent office or other authority. In other words, you can claim ownership on the basis of registration. The registration date takes priority, even if it differs from the date of actual use.
For example, even if another company has used a trademark for longer, the company or individual that files first is more likely to be granted ownership.
Which countries recognize trademark ownership on a first-to-file basis?
Most countries, including China, the European Union and the United Kingdom, recognize trademark rights on a first-to-file basis.
Others include:
- Argentina
- Brazil
- Colombia
- China
- European Union
- France
- Germany
- Indonesia
- Italy
- Japan
- Mexico
- Nigeria
- Russia
- Spain
- South Korea
- Turkey
- United Kingdom
Tip
If you plan to enter the Chinese market, register your trademark first, and check whether anyone has already registered your company’s trademark there.
First-to-use
This system, used in countries such as the United States and Canada, grants ownership based on the date the trademark was first used.
Under this system, the company or individual that can prove early, continuous use of the trademark generally owns it. Registration with the patent office is still important for legal protection, but the emphasis is on the date of first use.
For example, even if someone registered the trademark before you, your date of first use can give you priority, letting you challenge their registration and protect your brand’s IP.
Which countries recognize trademark ownership on a first-to-use basis?
Fewer countries use first-to-use than first-to-file, but major economies such as the United States, Canada and South Africa recognize trademark rights on a first-to-use basis.
Others include:
- Canada
- Australia
- Denmark
- India
- Iceland
- Ireland
- Israel
- Malaysia
- New Zealand
- United States
- South Africa
Tip
If you’re planning to enter the US, your brand’s trademark may already have been registered there. Run a trademark search, and check whether your company’s first use predates the registration.
What are the exceptions?
If you plan to grow your business by expanding abroad, pay attention here. Countries sometimes make exceptions to their first-to-file or first-to-use systems.
In the United Kingdom, for example, passing off, the deceptive or unauthorized use of a well-known or unregistered mark, is a tort under common law. In other words, even the UK, a first-to-file country, allows exceptions closer to a first-to-use system, so people can start a business more flexibly before formally establishing their IP.
Similarly, in Spain, trademark rights are generally recognized on a first-to-file basis. But a company or individual that owns a well-known trademark not registered in Spain can oppose the registration of a similar mark. That means in Spain, a brand’s value or interests can be protected even without formal registration.
These examples show why brands need to research a country’s trademark system and its exceptions before registering. Especially if you’re considering expanding abroad, nothing matters more than researching the registration process and the system that applies to your brand, and building a strategy to protect it effectively.
Key points for business owners
The difference between first-to-file and first-to-use is simple in essence, but it has a big impact on how brands manage their intellectual property (IP) around the world.
The most essential information for building and expanding your brand’s IP portfolio, or entering an overseas market, is which trademark system a given country uses.
What is an IP portfolio?
The set of rights a company holds in its intellectual property, such as patents, trademarks, designs and trade secrets. The rights and mix to focus on vary by type of business.
The best ways to avoid problems are:
- Research regulations: Research the regulations in countries that may matter for expanding and running your business.
- Register your IP: Register your IP in first-to-file countries before you start doing business there.
- Monitor your IP: Check in advance for potential IP issues in the countries you want to focus on.
What matters most is understanding and complying with the legal requirements in key countries, so your brand is protected from future IP infringement and has a foundation for growth in overseas markets.
Why registering trademarks abroad matters: trademark and IP infringement
As Korean dramas and short-form content (Reels, Shorts) take off abroad, Korean brands’ products are gaining popularity. With overseas demand rising, business owners expanding into the US, Canada, India, Europe and elsewhere have a lot to prepare beyond trademark registration. One of the most common mistakes is assuming the target country uses a first-to-use system and starting to sell without registering the trademark.
That decision can be a shortcut to hurting your brand. Consider everything you invest in expansion: opening online and offline stores in a new region and spending on marketing to build awareness. All of it can be lost if someone else has already registered the IP.
What if you could catch trademark squatting abroad early?
Run a free trademark search
Protecting your brand and IP can’t be stressed enough, especially on global marketplaces and in China, where unexpected risks can arise at any time. For companies planning to expand their business and IP portfolio at home and abroad, MarqVision offers a free trademark search.
MarqVision’s free trademark search makes protecting your brand’s IP easier, faster and more efficient.
How does it work?
- Submit your trademarks: Share detailed information about your company’s trademarks, and MarqVision’s AI analyzes it.
- Choose your target countries and markets: Specify the countries where you want to protect your IP, and MarqVision makes the complex world of IP rights easier to navigate.
- Share your online platforms: We recommend sharing your website or social media. That helps MarqVision give you more accurate insights into potential trademark disputes on online platforms.
Once you’ve shared this information, MarqVision’s team of experts identifies and analyzes potential trademark risks to help your company make better decisions. Build your IP protection strategy on data-driven decisions.
