Is a SaaS provider expected to have a trademark in every country?

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

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/

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....

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.

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.

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?

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

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...

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

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)

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

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.

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