Ask HN: Is a SaaS provider expected to have a trademark in every country?
I'm wondering how international law is affecting SaaS Providers. For example, let's say Notion.so has a trademark in the US for the name "Notion". Then someone builds, theoretically, a similar service in the UK, and trademarks "Notion" there. Can the UK entity prevent "Notion Labs" (that doesn't have an office in the UK) to sell to customers in the UK?
In a broader perspective, are SaaS providers, that inherently have customers all over the world, expected to register a trademark in all countries or only the countries they are supposed to have offices in?
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[ 3.1 ms ] story [ 66.2 ms ] thread[0]: https://www.wipo.int/madrid/feescalculator/
With the global nature of most SaaS businesses, trademarks have become an unwieldy (and very expensive) tool.
Generally speaking, you don't need to register a trademark to do business. Many (most?) businesses don't register their trade marks. Walk down to your local main street and likely many of the shops there are operating under marks that are unregistered.
Trademarks are useful to have an official record of your use of that mark in the case of a dispute with another company at a later point in time.
If you have not, then the mark is not active. Because Transistor fm has used their mark in commerce, then they will hold rights to it already even if they have not officially trademarked (not sure if this is so). So a useful way to handle this is to quickly make your first sale if you're trademarking something new (and issue an invoice).
They can also contest your mark during the trademarking process.
The above is the way it works in the US; not sure about other countries.
*Not a lawyer, only filled a trademark application myself.
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
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.
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!
> 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.
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!
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.
Most of the time you can file for an international TM under the Madrid Protocol. But you can delay filing in most circumstances under the Paris Convention (generally for 6 months).
But you should consult a lawyer. It's very are for a startup SAAS company to file TMs in more than 3 or 4 countries.
Trademark doesn't provide a constraint on trade, and additionally most courts would find that "Notion" and "Notion Labs" are sufficiently different to not cause confusion (depending on the classes of TM each owns)
This is complicated and expensive, and depends on specific circumstances, as well as dates of filing.
Obtaining trademarks in every country is not worth efforts unless you are at really high growth.
(1) Where does country/jurisdiction X consider the Internet to be for the purposes of defining jurisdiction? Is it where the misled customers are? Is it where the infringer's servers are? What about Google? How will this affect your ability to enforce your TM rights, registered or otherwise?
(2) How does one acquire TM rights in country/jurisdiction X?
(3) What are the requirements of TM registration in country/jurisdiction X? Does it require "use"? What does "use" mean in country/jurisdiction X, including in light of (1) above? How long can you delay commencing "use" in X (or pause use in X) without losing your application/registration? How does X deal with Madrid Protocol filings? What priority, if any, will securing a registration give you over pre-existing but unregistered users of the same or a similar TM in X, and does this situation evolve over time? What is the practical cost of securing and maintaining a registration in country/jurisdiction X? Is your TM "confusing" with some other not-identical TM already used and/or registered in X? What does it mean for one TM to be "confusing" with another in X? Is your TM unregistrable in X? What does it mean to be unregistrable in X?
(4) What are the courts of country/jurisdiction X willing to do to enforce rights arising from a TM registration in X? If a court of X can't stop the infringer directly, would it consider enjoining a third party such as Google to at least stymy the infringer (e.g. by making the infringer unsearchable using Google)? What scope of protection are the courts of X willing to extend to your TM? Will the courts of X let other persons get away with minor variants? Will the courts of X let other persons get away with using the TM on unrelated goods or services? How unrelated? Will the courts of X recognize an order of a court of country/jurisdiction Y?
Using them as a deterrent is a nice to have, in your key markets.
But if someone challenged that by using a similar name or casually turning your trademark into a verb, it becomes a war of attrition that you win by never playing.
So far, the only tangible benefit of having the trademark was that we were able to claim a dormant Twitter account with our name. But I can imagine it can help in the longer run as well...
Names can be changed - the solutions you offer are more important.
And as SaaS provider it would be stupid from competitors to use the same name because you probably already own e.g. the domain => so it would be more hassle for them (except for the countries where fakes are common, but no trademark protects you in these regions)