“Does MTV have a “logo no-go” problem in Latin America? Sam Panama Trading Co. has filed a $30 million lawsuit against the network and parent company Viacom alleging that it expected to make a ton of money selling clothing and luggage products featuring the MTV brand.
A licensing deal was signed with MTV Networks that allowed the company to offer products in 30 countries in Latin America and the Caribbean, but then San Panama says it discovered that MTV and Viacom “never registered the licensed marks and logos in many of the territories licensed to plaintiffs under the agreement.”
According to a complaint filed in New York federal court Wednesday and obtained by Courthouse News, San Panama and co-plaintiff Samoda International allegedly invested “many millions of dollars” producing and marketing the merchandise, only to run into a problem.
“They were seized by authorities as infringing upon the trademark, copyright and proprietary rights of third parties,” says the lawsuit. . .” - THR, Esq.
FASHIOENTLAW.COM LEGAL COMMENTARY
This case is very interesting and to some extent, its a case of “Plaintiff are you serious?” What about your own due diligence before you shelled out $30million or however much you claim you have been damaged to create apparel products with MTV logo on it? Isn’t that one of the the first things your attorney, if they had one which I presumed they did, who brokered the deal should have made sure of ? Also, after the deal was signed and before they shelled out $30million for apparel manufacturing of products to be used under their acquired MTV license, shouldn’t they have checked to be sure these marks were registered in Latin America?
Inconsistent Trademark Ownership Overseas
US Designers, fashion companies et. al., it is important you also consider a consistent registration of your mark internationally if you intend to do business overseas. MTV should have done this. This helps with a streamlined global enforcement of your mark should infringement occur. Further, you do not want to create liability for yourselves as with the MTV case, although it is a case that is subject to proof in court.
Registering your Trademark Overseas
Finally, below is information you should know when it comes to IP protection overseas. It is culled from the US Patent and Trademark office website and should closely align with what a Fashion Lawyer handling your trademark/intellectual property matter should tell you.
If you seek further information or have questions about what I discuss here, email me at (firstname.lastname@example.org). If it is for legal consultation on your case, please call my office during business hours. Visit (www.ebitulawgrp.com) to obtain contact information.
“How do I Protect my Intellectual Property Overseas?
Many small companies experience difficulty protecting their IPR abroad, including in China, as they are not aware of how to obtain and enforce rights in foreign markets. Some basic, often low-cost, steps small companies should consider include:
- Working with legal counsel to develop an overall IPR protection strategy;
- Developing detailed IPR language for licensing and subcontracting contracts;
- Conducting due diligence of potential foreign partners (The U.S. Commercial Service can help, see Export.gov);
- Recording their U.S.-registered trademarks and copyrights with Customs and Border Protection; and
- Securing and registering patents, trademarks, and copyrights in key foreign markets, including defensively in countries where IPR violations are common.
How do I Register my Patent, Trademark, or Copyright Overseas?
Patents and trademarks are territorial and must be filed in each country where protection is sought. A U.S. patent or trademark does not afford protection in another country. For more information on how to apply for individual patents or trademarks in a foreign country, contact the intellectual property office in that country directly. A list of contact information for most intellectual property offices worldwide can be found at the World Intellectual Property Office. However, the Patent Cooperation Treaty (PCT) streamlines the process of filing patents in multiple countries. By filing one patent application with the U.S. Patent and Trademark Office (USPTO), U.S. applicants can concurrently seek protection in up to 143 countries. For information about filing an international patent application under the PCT, visit the USPTO website: Click here .
The Madrid Protocol also makes it easier to file for trademark registration in multiple countries. By filing one trademark registration application with USPTO, U.S. applicants can concurrently seek protection in up to 84 countries. Information aboutfiling an international trademark registration application under the Madrid Protocol is available from the USPTO website.
Although most countries do not require copyright registration in order to enjoy copyright protection, registration can offer several benefits, such as proof of ownership. The United States has copyright relations with most countries throughout the world, and as a result of these agreements, we honor each other’s citizens’ copyrights. However, the United States does not have such copyright relationships with every country. A listing of countries and the nature of their copyright relations with the United States is available here. ” – USPTO