While establishing and maintaining a portfolio of trademark rights is important, it is also necessary to establish a successful trademark maintenance program. Such a program should include, at a minimum, keeping the trademark owner, its licensees and agents informed concerning the management of its trademark portfolio, maintaining centralized control of all trademark matters, enforcing trademark rights through policing and watching services, taking administrative, judicial and criminal action when necessary to enforce rights and establishing an effective licensing program.

Each trademark owner should designate a specific person to be charged with oversight of trademark matters so that decision making can be concentrated, productive and consistent. That person should work closely with trademark counsel in the development of trademark programs, in reviewing and making decisions concerning trademark availability searches, in determining the breadth of the trademark portfolio, in addressing problems with the trademark program as they arise, in tracking the trademark portfolio by maintaining information concerning the trademarks on a computer database designed for trademarks and in overseeing actions to enforce trademark rights against third parties who violate them.

Trademarks must be properly used in order to be maintained, as in most countries, failure to use the trademark within a specific period of time, anywhere from one year to five years depending upon the country, will subject a trademark registration to cancellation on the ground of non-use.

In addition, since litigating rights in a trademark will often require that evidence of use of the mark be presented in a proceeding, it is imperative that records be kept concerning use of the mark, including annual sales figures, annual advertising figures and samples, dates of first use in countries, as well as publicity surrounding the trademark, such as newspaper and magazine clippings. Such figures should be kept by the trademark owner as well as by their licensees for ready access when needed.

It is, of course, not merely enough that trademark rights be registered and that trademarks be used, such rights must also be enforced.

The first step in enforcing your trademark rights is policing them. One of the easiest and most effective ways to police trademark rights is to enroll them in a Trademark Watch Service. Such a service should, for a nominal fee, keep a “watch” on trademark and company name registers worldwide and alert the trademark owner when another party attempts to adopt a confusingly similar trademark in respect of confusingly similar goods or services so that appropriate action may be taken. When the publication of a conflicting mark is discovered, appropriate action by way of opposition or cancellation, or even infringement proceedings, should be considered. Watch Services also provide notification of certain domain name registrations.

Opposition practice in foreign countries varies widely. For example, in the United States it is a relatively simply matter to obtain extensions of the term to oppose a trademark application, in order to allow the potential opponent time to consider the grounds of the opposition or time to negotiate with the applicant. However, in many countries which have opposition procedures, the term to oppose an application is not extendible and one must be somewhat creative in how to proceed in the face of a non-extendible deadline when all the facts are not yet available. Some countries only require that a Notice of Opposition be filed, which may be supplemented by arguments and evidence at a later date. At the other end of the spectrum, other countries require that all arguments and supporting evidence, some of which may even require legalization, be filed before expiration of the relatively short opposition period.

In the United States, with its common law traditions, it is possible to base an opposition on mere prior use of a confusingly similar trademark. This is the exception rather than the rule in most other countries. As the majority of countries are civil law jurisdictions and therefore “race to the register” jurisdictions where rights in a trademark arise from registration, not use, prior use of a mark may be insufficient to succeed in, or even to file, an opposition. Therefore, in the absence of a prior application or registration, most such countries require at a minimum that the potential opponents’ mark must have been used in that country to the extent that the mark has become well-known in that country as the mark of the opponent. Prior trade name rights may also play a vital role in some countries in the success of an opposition based thereon.

There are also numerous international agreements and conventions that may apply to the filing of oppositions in foreign countries. The international agreement most often used in contested proceedings is the Paris Convention for the Protection of Industrial Property, to which a majority of trademark jurisdictions are party. This Convention contains a number of key provisions which may, in certain circumstances, provide substantive rights to a trademark owner who has not registered his mark in the country where he wishes to take action. Other regional agreements will also be relevant, such as the Andean Community Decision 344, which governs trademark rights, the Inter-American Convention, etc. Finally, although the United States does not recognize trademark rights arising from mere reputation in the United States without commercial use, there are a small number of countries in which it may be possible to take action against a conflicting trademark application based on a trademark which has not been used in that country but which has a reputation arising from advertisements, foreign travelers, etc.

Given the same scenario in different countries, the chances of succeeding in an opposition may differ widely. Tests for determining the similarity between marks differ from country to country. Whereas some countries will consider two marks to be similar, other countries viewing the identical marks will regard the marks as entirely distinguishable. Countries vary widely on the standards used to determine similarity of goods and classes. Whereas some countries consider merely the goods of interest to the parties, other countries will focus on the classes in which the marks are registered in determining whether confusion is possible. A small number of countries who use the Nice Classification have even adopted a sub-classification system which governs issues of similarity. The problem is further exacerbated in many jurisdictions, particularly civil law jurisdictions, which do not follow the principle of stare decisis. Therefore, a decision may be determined by the construction of the case as crafted by counsel with knowledge of international practice, and not only law.

There are even certain countries that do not recognize similarities between a trademark registered for certain goods and a trademark registered for corresponding services. For example, a trademark registered for “books” and the same trademark registered for “book publishing services” may not be considered to be confusingly similar by some trademark offices.

Ultimately, decisions as to confusing similarity are subjective decisions that are made by trademark office personnel, by judges or by appellate tribunals and it is vital to have counsel that has sufficient experience and sensitivity to understand in advance how each case is likely to be decided. One must also be sensitive to the home field advantage, namely a foreign company taking action against a local company in some countries may be at a disadvantage as a result of xenophobia and surreptitious preferences granted to nationals.

Conducting negotiations abroad, as opposed to at home, will also require a different mindset. First of all, it is very important to know the "national character" of the persons with whom you are negotiating. Negotiating the same agreement in Japan will take a much different course than in a European country or in South America and obtaining the services of counsel who are well experienced in such matters is paramount, particularly since the failure to take such factors into account during negotiations may adversely affect the outcome. It is also important to realize the legal ramifications of any agreement which is reached so that, for example, an agreement that is concluded does not run afoul of local laws, such as contractual or antitrust laws, etc.

Although many of the issues that arise under cancellation actions have already been discussed under opposition actions above, there are other issues that must also be considered. First of all, unlike the United States where a cancellation action is similar to an opposition action in venue and applicable law, the same is not true abroad. In most countries there may be no administrative procedure for canceling a trademark. Rather, cancellation actions must be brought before the local courts, which can greatly increase the time, costs and even predictability of such proceedings.

In the United States, a trademark registration is immune from attack on the ground that it is inherently unregistrable once the trademark owner files Section 8 and 15 Affidavits between the fifth and sixth years of registration. Although in certain countries a registration may eventually become immune from such attack, often there is no statute of limitations on the period following registration within which a cancellation action may be instituted. A notable exception exists in British law countries that follow the former United Kingdom Trade Marks Act of 1938 that provided that a mark registered in Part A of the Register, but not in Part B of the Register, became immune from attack on the ground of inherent non-registrability seven years following the date of registration. Some countries, such as Mexico, provide different statutes of limitation for instituting cancellation actions based upon the ground of the cancellation action. Therefore, it is very important to ascertain the applicable statutes of limitations, if any, that may exist.

The grounds for bringing a cancellation action may also vary in different countries. Some countries require that a plaintiff in an action to cancel a trademark registration have standing to bring the action, namely, that the plaintiff is in some way affected or aggrieved by the existence of the registration. Some countries even require that the plaintiff in a cancellation action be the owner of a prior conflicting trademark registration. Other countries require no particular standing at all in order to bring a cancellation action.

The grounds for cancellation actions may be similar to that of opposition actions, but also include additional potential claims. More typical grounds include those asserting that the registered mark is confusingly similar to a mark that is already registered or that is already in use, or that a company name that is already registered or that is already in use.

The most common additional ground for cancellation actions is non-use. In the overwhelming majority of countries, a registered trademark must be used within a certain period of time following registration (usually between one and five years), failing which the registered mark is vulnerable to cancellation on the ground of non-use, unless the non-use was justified, such as on the ground of force majeure . Potential plaintiffs must be careful because the standard of use varies considerably in countries. In a small number of countries the mere advertisement of a registered trademark constitutes use sufficient to withstand an attack on the ground of non-use. Use merely for export may also qualify.

Often in a cancellation proceeding the burden of proof will be on the moving party to prove that the registered mark should not be registered. This of course renders non-use cancellation actions in certain countries expensive and involved since the plaintiff must prove a negative, namely, that a mark is not in use in a particular country.

An increasing trend in national and regional trademark laws is to allow the defendant the opportunity to defend a cancellation action on the ground that the plaintiff’s mark is not in use. Courts in many countries still hold that such a “defense” is inappropriate for the cancellation action and require the defendant to bring a separate cancellation action in order to accomplish the same thing. However, potential cancellation plaintiffs must now in many countries make sure that their trademark registration on which the cancellation action is based can withstand an attack on the ground of non-use.

The former advice is particularly relevant as in many jurisdictions it is possible for the tribunal to issue an award of costs against the losing party for the prevailing party’s litigation costs. Costs may also be awarded in an opposition proceeding in certain jurisdictions.