campusreview.com.au
TRADEMARK TERRORS
China remains one of the more
challenging jurisdictions with regard to
intellectual property rights protection, and
universities would be wise to understand
the risks. Unlike in Australia, it is possible for
anyone to claim ownership of a trademark
in China if they are the first to file an
application to register that trademark.
That’s starkly different to Australia, where a
university can claim to be the first user of
a trademark (even if it was not first to file)
and hence its rightful owner, even ahead
of formal registration.
China also has a complex system
featuring trademark subclasses, which can
allow an entity to register a university’s
trademark in a subclass for goods or
services similar to what the university
offers. This can then prevent that university
from being able to effectively control its
use of its trademark and enforce its rights.
Universities should seek advice on how best
to prevent such a situation.
PROPER PROTECTION
Prior to commencing use of a trademark in
an international market, universities should
have searches carried out to ensure there are
not any existing registrations that could give
rise to a claim of trademark infringement.
To ensure that a university can protect
and enforce its rights in its brands, it should
seek to obtain registration of, at least, its
core trademarks.
It is possible to achieve international
trademark protection in a wide variety of
overseas markets by filing a Madrid Protocol
application. Most countries – with a few
noticeable exceptions, such as Canada – are
a party to the Madrid Union (the agreement
and treaty that governs Madrid Protocol
applications). This system enables the
applicant to file one application designating
the countries it is seeking protection in.
It is a streamlined method of achieving
international trademark protection and can
be carried out from Australia. For countries
such as Canada, which are not part of
the Madrid Union, a separate trademark
application can be filed directly through the
national trademarks office.
While trademark ownership is relatively
straightforward when the trademark
is being used solely by one institution,
universities that are seeking protection of
a trademark being used in collaboration
with other institutions should seek advice
on how to structure ownership and usage
INTERNATIONAL EDUCATION
to avoid the validity of the trademark
being challenged.
Universities also need to be mindful
that there can be a lengthy wait to obtain
registration in some countries. While in
Australia the quickest a trademark can be
registered is seven-and-a-half months from
the date of filing, in other countries it can take
far longer. For example, in August, the Indian
trademarks office had been issuing certificates
of registration for trademarks filed in 2009.
The UK’s recent Brexit vote also raises
questions for universities seeking protection
across the current and fu