Not all countries look at trademarks the same way
Every country has its own rules about what makes a brand name or logo eligible for protection. Some are strict, some are lenient, and some make decisions based on first-come, first-served.
Let’s look at a few key differences:
1. Ex Officio vs. Non-Ex Officio Systems
One of the first distinctions in trademark law that international businesses encounter is whether a jurisdiction conducts an ex officio examination or a non-ex officio (or “opposition-based”) system.
Ex officio jurisdictions: The trademark office actively examines applications for compliance with legal requirements. They may refuse registration if the mark is deemed descriptive, generic, or likely to cause confusion with an existing mark. Examples include China, Japan, and many European countries.
- Implication: A brand owner cannot rely on “first-to-file” alone. Even if there’s no existing conflicting trademark, the office may still reject an application for being “too descriptive” or otherwise unregistrable.
Non-ex officio jurisdictions: The office registers trademarks as long as formalities are satisfied, leaving substantive disputes to be resolved through oppositions or legal challenges. The United States historically leaned closer to this approach, though it also incorporates substantial review in certain cases.
- Implication: Brands may successfully register a mark even if it is arguably weak, but enforcement could be trickier if another party challenges it later.
Why this matters: in strict systems, you can’t just hope your brand slips through; you need to plan carefully and choose a name that meets the local standards. In more lenient systems, you may register easily, but you could face disputes later.
2. Leniency of name assessment: US vs. China
Even when countries examine trademarks, the bar for approval can differ.
United States: The USPTO often allows registration of marks that are suggestive, fanciful, or even arbitrary in relation to the goods or services. Descriptive marks can be registered if they have acquired distinctiveness (“secondary meaning”). The US system also emphasizes use in commerce, meaning that a mark can gain protection through actual market presence even before formal registration.
China: The CNIPA (China National Intellectual Property Administration) takes a stricter view. Marks that are merely descriptive, generic, or common expressions are often refused, even if they have some commercial recognition. Additionally, the “first-to-file” principle dominates, meaning the first party to file a mark often secures rights, even if they were not the first to use it in practice.
Takeaway: brand name that sails through in the US might hit a wall in China or Japan. Similarly, a name that is acceptable in Europe might be rejected in Latin America or the Middle East. A global brand cannot assume a one-size-fits-all approach to registrability.
What does that mean for a global brand strategy?
1. Avoiding costly rebranding
One of the most painful consequences of ignoring jurisdictional differences is having to rebrand in key markets. Imagine a startup that launches globally with a single name, only to discover that in China the mark was refused or already registered. Rebranding mid-growth not only confuses customers but can also wipe out brand equity and require expensive marketing adjustments.
2. Enforcement challenges
Even if you secure a trademark, enforcement depends on understanding local rules. In first-to-file jurisdictions like China, failure to register proactively can allow copycats to secure rights before you even enter the market. In non-ex officio systems like the US, enforcement relies heavily on litigation or opposition proceedings, which can be costly and time-consuming.
3. Cultural and linguistic considerations
Beyond legal requirements, branding must consider linguistic and cultural differences. A name that works in English might be unpronounceable or have unintended meanings elsewhere. Some jurisdictions, especially in Asia, may also refuse marks that incorporate certain colors, numbers, or culturally sensitive symbols.
How to build a brand that can cross borders
A smart global brand strategy treats your name, logo, and identity as valuable assets that need protection everywhere you plan to operate. By planning ahead, understanding local rules, and thinking strategically, you can avoid costly mistakes, strengthen your international presence, and make your brand truly global.
And here’s the easiest first step: get a free lawyer’s check of your brand name. Even a quick review can reveal whether your name is likely to work in other countries, flag potential conflicts, and save you from expensive surprises down the line. For any business planning to expand, this simple step can be the difference between smooth growth and a costly rebrand.
