
Ask HN: Is a SaaS provider expected to have a trademark in every country? - stanislavb
I&#x27;m wondering how international law is affecting SaaS Providers. For example, let&#x27;s say Notion.so has a trademark in the US for the name &quot;Notion&quot;. Then someone builds, theoretically, a similar service in the UK, and trademarks &quot;Notion&quot; there. Can the UK entity prevent &quot;Notion Labs&quot; (that doesn&#x27;t have an office in the UK) to sell to customers in the UK?<p>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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lmarshshalltm
Hi- I am a trademark lawyer and work with many SaaS companies. I will tell
you, it is virtually impossible for even the biggest companies to have a
trademark in every country. It is a time intensive and very costly process to
expand your trademark "globally." We can rely on the Madrid Protocol to extend
a US trademark to many other countries but every country is a separate cost
and the trademark is reviewed according to the laws of each individual
country. Our clients expand on an as needed basis. We look at the countries
where a client has the most business and apply in those countries. Then little
by little we may expand out to other countries. Be careful working with large
law firms- they sometimes will scare a client into more protection then the
need. But of course there is always a risk/benefit consideration. Yes, it
could happen that another entity comes along with a similar mark for a similar
business in a different country. But most companies do not have a billion
dollar budget for trademarks. Feel free to email me with other questions.
laurie@tmthespot.com tmthespot.com

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nairboon
Yes you're expected to register a trademark in each country where you're
conducting business. You can calculate the costs of registering a world wide
trademark here [0]. It gets a bit expensive, but if you just cover your
primary markets US/EU it's not that big of an expense.

[0]:
[https://www.wipo.int/madrid/feescalculator/](https://www.wipo.int/madrid/feescalculator/)

~~~
kube-system
> Yes you're expected to register a trademark in each country where you're
> conducting business.

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.

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JackPoach
We've had our trademark squatted in China. We didn't bother to register it,
and now it's a problem if China becomes a big market for the SaaS I work for.
There's 'Madrid System' that covers EU and other countries, but yeah, it's a
good idea to have your TM registered in your key markets. To learn more about
Madrid system, just google it or see
[https://www.wipo.int/madrid/en/#:~:text=The%20Madrid%20Syste...](https://www.wipo.int/madrid/en/#:~:text=The%20Madrid%20System%20is%20a,portfolio%20through%20one%20centralized%20system).

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nl
There's lots of bad advice in this thread. You should speak to an IP lawyer in
your country.

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.

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vmception
Defending a trademark is a waste of time.

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.

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ectocardia
Here's a practical argument for why you might need a lawyer to answer this
question: the question gives rise to many, many legal issues. Some examples
follow; no particular order.

(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?

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smoe
I think in countries within the relevant WTO treaty even as a small business
your mark can theoretically recieve a "well known" status and similar
protection as if it were registered.

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

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stanislavb
The question is, what does "doing business directly" means. You have a website
/ a SaaS product, and then people from all around the world can subscribe.
¯\\_(ツ)_/¯

~~~
nl
There is no need to hold a trademark to do business.

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.

~~~
mattbee
There's no _need_ but if someone straight-up registers your name before you
do, you will have an expensive fight compared to the cost of registration.

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!

~~~
nl
This is true(ish)..

> 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.

~~~
mattbee
Yes we spent £20k to win our registration, but could have lost the mark
entirely - I can't imagine what that would have cost instead.

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!

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gingerlime
As far as I recall, we registered our trademark in the US and EU, and it
wasn't super expensive. That said, we waited a few years until we did it, when
it started to feel a bit more important / the cost more negligible.

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...

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stanislavb
OK, so if someone trademarks "TransistorFM" in the US, they could sue the
podcasting service [https://transistor.fm/](https://transistor.fm/) for
selling to people in the US?

~~~
drchiu
You should consult with a trademark lawyer (I'm not a lawyer), but my
understanding from lawyers who've trademarked for me is that you must have
used (or will use via the intention to use filing) the mark in commerce.

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.

~~~
lol636363
Also if you are able to successfully trademark Transistor FM and then sue
transistor.fm, the suit is unlikely to go anywhere since transistor.fm can
easily show they have been using that domain before your trademark. And you
may also lose it. Disclaimer IANAL.

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Wronnay
I think you shouldn't bother too much about that.

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)

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cultofmetatron
This reminds me of all the "victoria's secret" stores I see when I' traveling
around Asia and eastern Europe.

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jitendrac
I would say just register in US and EU, if necessary buy the country-specific
domain name extension and redirect to your main. like, my-saas-service.au to
my-saas-service.com.

Obtaining trademarks in every country is not worth efforts unless you are at
really high growth.

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ThePowerOfFuet
This is the point of a registering a world trademark with WIPO.

~~~
stanislavb
Doesn't that cost $30,000+ per trademark class. And many trademarks span into
2-3 classes... which bumps the cost up to $50-100k :/

~~~
jacquesm
Cheaper than a lawsuit.

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sushshshsh
This is why I would never want to be a businessman, much easier to just let
the big dogs handle it while I focus on the code.

