Protecting a beer name in more than one country

What a trademark is

A trademark protects a sign, usually a name or logo, that tells customers who made a product. For a brewery it covers the brand name and sometimes each beer name, the label and the logo. It does not protect the recipe or the style of beer.

This guide describes the process in general terms. Laws differ by country and change. It is not legal advice. Use a trademark attorney.

Rights are territorial

In most legal systems a trademark right exists only in the country, or the bloc, where it is registered or used. A registration in your home country does not stop someone else registering the same name in another. Some systems give weight to who files first. Others give weight to who uses first. Which system applies where you sell matters. It is a question for your attorney.

Because of this, the usual advice is to decide your priority markets early and file before you launch there, rather than after. Naming a beer that works in more than one language covers the checks to run first.

Search before you file

A clearance search looks for identical or similar marks in the same or related goods. Beer, other alcoholic drinks and sometimes non-alcoholic drinks can all conflict. A search that finds a similar mark does not always mean you cannot proceed, but it changes the risk. An attorney can judge it.

Filing a name that someone else already owns can lead to refusal, an objection or a dispute. Fees spent on a doomed filing are wasted.

Filing routes

There are broadly three routes. You can file separately in each country. You can file through a regional office that covers several countries at once, where one exists. Or you can use the international system run by the World Intellectual Property Organisation (WIPO), the Madrid System, which lets an owner with a home registration or application request protection in several member countries through one application.

Each route has trade-offs in cost, speed and risk. A Madrid filing also depends on the home application or registration for its first five years, so trouble at home can spread abroad. Your attorney will advise on the order and the markets.

Priority periods and timing

Under an international treaty known as the Paris Convention, a first filing in a member country gives a priority period, six months for trademarks, to file in other member countries and be treated as if you had filed on the first date. The period matters, so diarise it on the day you file.

Examination can take months. Plan your launches around it. Do not print a big label run until you know the name is clear in the markets that matter.

Use it or risk losing it

In many countries a mark that is not used for a period, often several years, can be cancelled for non-use. Keep records of sales by country. Keep labels and invoices. If you plan to enter a market years from now, ask whether you should wait to file there.

Watch for copycats. A distributor or a retailer may register your name in their country. Some countries make it easy. A clear distribution agreement should state who owns the brand.

Costs, honestly

Trademark work has costs at every step: searches, filing fees, attorney time and renewals. We do not quote figures because they differ by country and change. Ask for an estimate per country before you begin and decide which markets earn their place.

A common approach is to protect the home market first. Then you add the two or three export markets where you have a signed distributor or a real launch date. Markets you only hope to enter someday can wait, as long as you watch the registers for others filing your name.

When to get help

See a trademark attorney before you file, before you sign a distribution deal and when anyone writes to you about a similar name. Bring a list of your priority markets, the name, the logo and the goods you sell. For a wider picture of how trademarks fit into a brand, our short course on naming and trademarks for drinks brands gives the vocabulary to hold that conversation. Related reading: what a beer label must show.

Common questions

Does a trademark in my country protect me abroad?

Usually not. Rights are generally territorial, so you need protection in each market that matters.

What is the Madrid System?

It is an international filing route run by WIPO that lets an owner seek protection in several member countries through one application. Check whether it suits your markets.

Should I file before or after launching?

Often before. Systems differ by country, so ask a trademark attorney.

Can I do this without an attorney?

You can file some applications yourself, but clearance and strategy are easier to get right with professional advice.