4 ms·

I think in countries within the relevant WTO treaty even as a small business your mark can theoretically recieve a "well known" status and similar protection as

by smoe 6y ago

I think in countries within the relevant WTO treaty even as a small business your mark can theoretically recieve a "well known" status and similar protection as if it were registered. But no idea how well this works, and in practise I reckon you'd still want to register trough the Madrid system for the regions you plan to do business in directly

stanislavb 6y ago
The question is, what does "doing business directly" means. You have a website / a SaaS product, and then people from all around the world can subscribe. ¯\_(ツ)_/¯
- nl 6y ago
  There is no need to hold a trademark to do business. If you start doing business is a country using a name it (usually - depending on local laws) provides some protection against others registering that trademark in that name (as a non-registered trademark). You need documentary evidence you were using it in that country before the trademark was attempted. You can then spend the money to register a trademark at some future time. But talk to a (good, IP specialist) lawyer! Even $5-$10K on lawyer fees is cheap compared to registering international trademarks in multiple categories.
  - mattbee 6y ago
    There's no need but if someone straight-up registers your name before you do, you will have an expensive fight compared to the cost of registration. Happened to my last company, the new company didn't want to budge and it must have cost £20k to rectify compared to the few hundred it would have cost if we'd registered it ourselves when we started trading 10 years earlier. Proving we'd got unregistered rights to the mark was possible because of our marketing and lots of nice letters from customers. But it was perfectly possible that we could have lost it. You know where your customers are - register there, and early!
    - nl 6y ago
      This is true(ish).. > Happened to my last company, the new company didn't want to budge and it must have cost £20k to rectify compared to the few hundred it would have cost if we'd registered it ourselves when we started trading 10 years earlier. £20k might be cheap compared to the fees associated with keeping a TM registered in multiple categories in multiple countries for 10 years. It's pretty easy to spend $5K registering a TM in two countries across the number of categories you'd expect most SAAS companies to register in, and generally I think that gives 5 years of protection.
      - mattbee 6y ago
        Yes we spent £20k to win our registration, but could have lost the mark entirely - I can't imagine what that would have cost instead. It's a tricky expense to justify when you're bootstrapping, but if you're funded at all - put those TM registrations on the list!
- smoe 6y ago
  I'm by far not well versed enough i n legal matters to give a conclusive answer on this, but as I understand it, the trademark thing mostly becomes an issue when you want to advertise locally and especially for enterprise SaaS where you pretty much need a sales team on the ground and maybe even a local business entity for the other party to sign with. I don't think that it is very likely that a country will try to block its citizens from subscribing on some website. At least I have never heard it being done over trademark issues.
tia4tia 6y ago
That is very unlikely. Also, there are many classes of trademarks.

by smoe 6y ago

stanislavb 6y ago

The question is, what does "doing business directly" means. You have a website / a SaaS product, and then people from all around the world can subscribe. ¯\_(ツ)_/¯

nl 6y ago
There is no need to hold a trademark to do business. If you start doing business is a country using a name it (usually - depending on local laws) provides some protection against others registering that trademark in that name (as a non-registered trademark). You need documentary evidence you were using it in that country before the trademark was attempted. You can then spend the money to register a trademark at some future time. But talk to a (good, IP specialist) lawyer! Even $5-$10K on lawyer fees is cheap compared to registering international trademarks in multiple categories.
- mattbee 6y ago
  There's no need but if someone straight-up registers your name before you do, you will have an expensive fight compared to the cost of registration. Happened to my last company, the new company didn't want to budge and it must have cost £20k to rectify compared to the few hundred it would have cost if we'd registered it ourselves when we started trading 10 years earlier. Proving we'd got unregistered rights to the mark was possible because of our marketing and lots of nice letters from customers. But it was perfectly possible that we could have lost it. You know where your customers are - register there, and early!
  - nl 6y ago
    This is true(ish).. > Happened to my last company, the new company didn't want to budge and it must have cost £20k to rectify compared to the few hundred it would have cost if we'd registered it ourselves when we started trading 10 years earlier. £20k might be cheap compared to the fees associated with keeping a TM registered in multiple categories in multiple countries for 10 years. It's pretty easy to spend $5K registering a TM in two countries across the number of categories you'd expect most SAAS companies to register in, and generally I think that gives 5 years of protection.
    - mattbee 6y ago
      Yes we spent £20k to win our registration, but could have lost the mark entirely - I can't imagine what that would have cost instead. It's a tricky expense to justify when you're bootstrapping, but if you're funded at all - put those TM registrations on the list!
smoe 6y ago
I'm by far not well versed enough i n legal matters to give a conclusive answer on this, but as I understand it, the trademark thing mostly becomes an issue when you want to advertise locally and especially for enterprise SaaS where you pretty much need a sales team on the ground and maybe even a local business entity for the other party to sign with. I don't think that it is very likely that a country will try to block its citizens from subscribing on some website. At least I have never heard it being done over trademark issues.

tia4tia 6y ago

That is very unlikely. Also, there are many classes of trademarks.