A comprehensive trade mark portfolio is one of your business’s most valuable assets. Trade marks are potent rights with unparalleled longevity. They give you a monopoly over your mark when used in connection with the relevant goods or services and can last forever if renewed. Trade mark rights are territorial and apply only in the country of registration. So, if you register a UK trade mark, your exclusive rights only apply in the UK.
Many businesses trade in several countries, at least online, and need trade mark protection across a number of territories. You can obtain international trade mark protection in two ways. You can file trade marks on a country-by-country basis, or you can use a centralised system, such as the Madrid Protocol. Under the Madrid Protocol, also known as the Madrid System, you can obtain trade mark protection in up to 130 countries through a single application.
Here, our trade mark solicitors explain the importance of international trade mark protection and discuss the different options available. We consider the benefits of the international trademark system and give an overview of the procedures involved.
Contents:
- What are the benefits of registering your trade marks internationally?
- Can a trade mark be registered internationally if it is not registered domestically?
- What classes of goods and services are covered by international trade marks?
- How does the international trade mark registration process work?
- Which international trade mark filing system is best for you?
- What information do you need to file an international trademark application?
- How much does it cost for an international trade mark?
- How long does it take to register an international trade mark?
- Can international trade marks be opposed or cancelled by third parties?
- Can I modify my international trade mark application after submission?
- How long does an international trade mark last?
- Renewing an international trade mark
- Summary
What are the benefits of registering your trade marks internationally?
Since trade marks are territorial rights, you may need to develop a global trade mark portfolio to comprehensively protect your brand. Specific benefits of registering your trade marks internationally include the following:
To protect your brand and enforce your rights
Registering a trade mark in the UK will provide significant brand protection here but will be of little use if you expand your commercial operations internationally. If someone uses your mark outside the UK without your permission, you cannot rely on your UK trade mark to stop them. If you have registered trade marks in the relevant country, though, you can enforce those registrations against infringers.
To expand your business
If you have your eye on international expansion, registering trade marks in the relevant countries can facilitate your entrance into the marketplace. For example, you can licence your national trade marks to local businesses to operate franchises. In doing so, you will increase awareness of your brand within that location without needing to have a physical presence there yourself.
To protect your place in the market
Registering your brand as a trade mark in the territories you hope to expand into before you have even launched there can help avoid situations whereby unscrupulous third parties register trade marks relevant to your business in their own names. These so-called ‘trade mark-squatters’ then seek to sell the trade marks to you at an inflated cost. By getting in there first, you can avoid this issue and safeguard your position ahead of launch.
It is important to note that it is not a good idea to simply register your mark at will with no intention to use it in all designated countries since it may subsequently be challenged on the grounds of non-use.
Can a trade mark be registered internationally if it is not registered domestically?
If you file trade marks on a country-by-country basis, there is no need to register your trade mark here in the UK first. Of course, in practice, most businesses based in the UK trade here, so they require a UK trade mark.
If you use the Madrid Protocol, you must register a trade mark in your home country first. This will be known as your ‘basic mark’, and the body responsible for registering it is the ‘Office of Origin’. The Office of Origin for UK trade marks is the Intellectual Property Office (IPO). Only when your original trade mark application has been processed and registered can you apply for your international mark. Your basic mark will act as the basis of your international trade mark registration.
What classes of goods and services are covered by international trade marks?
The goods and services covered by your international trade mark must be the same, or narrower, than those covered by your basic mark. The Office of Origin will check your international trade mark application against your basic mark to confirm that they cover the same or narrower goods or services.
How does the international trade mark registration process work?
As we have explained, you can obtain international trade mark registrations on either a country-by-country basis or through the Madrid Protocol.
Registering on a country-by-country basis
When you expand your trade mark portfolio through national filings, the relevant process will depend on national trade mark laws and procedures. It is sensible to speak to a trade mark lawyer who will be able to assist with the filing; in some countries, you are obliged to have local representatives on the record as acting for you. Our intellectual property solicitors work with a trusted worldwide network of professionals and will instruct them on your behalf.
Registering through the Madrid Protocol
While you need to file just a single application to register an international trade mark through the Madrid System, each resultant trade mark is separate and distinct from the others and has the same effect as if it had been registered as a national mark in the designated country.
Which international trade mark filing system is best for you?
Having the choice of two routes for obtaining international trade mark protection begs the question, which is best for your business?
Advantages of the Madrid Protocol
The Madrid Protocol offers significant benefits to businesses requiring international trade mark protection by significantly simplifying the process. Some specific advantages of the system include the following:
- Extent of protection
At the time of writing, 130 countries are members of the Madrid Protocol. Together, they account for over 80% of world trade.
- Costs savings
One of the main benefits of the Madrid Protocol is the time and costs you can save by using it. Rather than having to pay filing fees in every country you require protection, under the Madrid Protocol you pay just one filing fee. You can also save on legal costs by not having to hire a local trade mark agent in every country from the outset.
- Simplified trade mark portfolio management
In addition to centralising the application process, the Madrid Protocol simplifies trade mark maintenance by enabling you to undertake tasks such as renewals through a centralised, online system.
Disadvantages of the Madrid Protocol
There are several reasons why this may not be the most appropriate filing strategy, they include:
- Not all countries are members
Whilst the Madrid Protocol membership is extensive and includes most of the world’s largest economies, there are some notable exceptions, including several African nations.
- The Protocol does not guarantee registration
You must have a registered trade mark in your home country before you can apply for an international trade mark through the Madrid Protocol. Your basic mark does not guarantee that your mark will be accepted for registration in all designated countries included in your international application. Each country’s own trade marks office will review your proposed mark, and if it does not satisfy their criteria, your application will fail in that country.
- Registration time
Achieving trade mark registrations through the Madrid Protocol can be a lengthy process. The trade marks offices in each of your chosen countries have 12 or 18 months, depending on the country, to deal with your application. By contrast, UK trade mark applications are usually processed by the IPO in just 3-4 months.
In practice, most brand owners use the Madrid protocol in conjunction with individual national applications to secure the necessary protection.
What information do you need to file an international trademark application?
Before filing an international trade mark application using either means, you must ensure your mark meets the relevant registration criteria and will not infringe any existing trade marks. Our trade marks solicitors will advise on the nature and extent of the searches required and undertake them for you.
If you file trade marks on a country-by-country basis, the information required will depend on each country’s own requirements.
The process under the Madrid Protocol is set out below. It’s fairly complex and lengthy, so it’s advisable to instruct experience trade marks solicitors, like ours, to act on your behalf.
- Prepare your international trade mark application
Applications under the Madrid System can be filed in either English, French or Spanish. In your application, you need to designate those countries of the Madrid Protocol in which you require protection, state the goods or services your mark should cover and provide details of your proposed trade mark.
- File your application at the IPO
Since your trade mark application will presumably be originating from the UK and your ‘basic mark’ will be your UK trade mark, you send your application to the IPO, which will become the ‘Office of Origin’.
The IPO will confirm that your international application corresponds with your basic mark and then forward it to the International Bureau of the World Intellectual Property Organisation (WIPO).
- Examination by WIPO
Upon receipt of your international application, WIPO will carry out a formal examination to confirm it meets various technical requirements relating to matters such as the correct classification of goods and services, and includes sufficient contact details. If your mark meets the formal requirements, WIPO will enter it into the International Register and notify the designated countries.
Crucially, entry into the International Register does not mean that your mark has been accepted in each designated country; it simply means that WIPO’s formal requirements have been satisfied. WIPO will forward your application to the relevant trade marks offices, who will carry out their own substantive examinations.
- Examination by designated countries
The trade marks office of each designated country will examine your mark as if it were a national application. If there are permitted reasons for opposition under the country’s laws, either the office or third parties can oppose your application. The trade marks office must notify WIPO of any such oppositions within 12 or 18 months, depending on the country.
Upon receipt of such a notification, WIPO will inform the Office of Origin, and the applicant must then instruct local trade marks attorneys to deal with the matter. We work with a network of trusted attorneys around the globe and will liaise with them on your behalf.
- Registration
If your application is accepted, or when any oppositions have been successfully addressed, the national trade marks office will notify WIPO, who will update the International Register. Your trade mark will then have the same effect, and provide the same protection, as if it were a national mark.
How much does it cost for an international trade mark?
The cost of using the Madrid Protocol depends on various factors, including which countries you designate, and the extent of protection required. Filing an international trade mark application through the Madrid System tends to be considerably cheaper than filing a series of national trade mark applications, particularly if you require extensive protection.
We can give you an idea of the likely costs of your application once they have ascertained your designated countries and other pertinent facts.
How long does it take to register an international trade mark?
WIPO might enter your mark into the International Register within 3-4 months of receipt. However, your mark is not protected in a designated country until its trade marks office has reviewed and accepted it, which can take up to 18 months. If your mark is opposed, the process can take significantly longer.
Can international trade marks be opposed or cancelled by third parties?
Your international registration is dependent on your basic right for the first five years. If that right is attacked and declared invalid within that time, you may lose your international registration across all designated countries. You can then look into registering your marks as national trade marks, but this will obviously incur additional costs.
Can I modify my international trade mark application after submission?
You can expand the scope of your international trade mark to designate additional countries at any time following registration. You can also carry out various administrative tasks, such as changing the ownership details and cancelling the registration. If you need to substantively change the trade mark itself, you will likely need to file a new application.
How long does an international trade mark last?
Your international trade mark lasts for an initial period of ten years, but can be renewed indefinitely.
Renewing an international trade mark
You can renew your trade mark registration through WIPO from six months before your current period of protection is due to expire to six months following its expiry. If you renew after expiry, you will incur a surcharge.
Additional requirements may apply in some of your designated countries. For example, some countries, such as the USA, require regular ‘Declarations of Use’ confirming that you are using the trade mark within that territory. It is crucial that you adhere to any additional requirements to maintain your registrations in the relevant country.
Summary
An international trade mark registration provides your business with an invaluable form of brand protection. The extensive membership of the Madrid Protocol enables you to protect your brand on a virtually global basis through a single application. The system may not work in every situation, and a truly comprehensive brand protection strategy sometimes necessitates an application for an international trade mark alongside others on a national basis.
Our trade marks solicitors have extensive experience in devising effective, cost-efficient global brand protection strategies for our clients. They will guide you through the application process, ensuring all bases are covered and your documentation is as watertight as possible. Once your trade marks are registered, our trade marks solicitors will maintain them on your behalf. They couple their legal expertise with cutting-edge trade marks monitoring software to ensure your portfolio is up-to-date and effective at all times. Their network of global legal advisors is always on hand to assist with any issues of national law and procedure, so you can be sure of the very highest levels of brand protection.
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