Live data from Hacker News

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

news.ycombinator.com

1–10 of 32 posts

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

#1
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?

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#4
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/

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#5

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

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 :/

Cheaper than a lawsuit.

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#7
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

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#8
post #7

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

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)_/¯

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#9
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.

Post reply on HN