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International Trade Mark Registration

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Once you have obtained trade mark registration in the UK, If you then wish to register your trade mark internationally, you would need to either apply for an international trade mark via the World Intellectual Property Organisation ("WIPO") or a domestic trade mark via the trade mark office of the territory in question.

Firstly, you must consider the international territory/territories in which you currently operate under your trade mark (or intend to trade in due course). Once the applicable territories have been identified, you must then decide whether to apply for an international trade mark via the WIPO's 'Madrid Protocol' (an international system for obtaining trade mark protection within over 100 countries and/or regions using a single application - please see below FAQs for further information) or via a domestic application to the registry of the territories in question.

There are various advantages to each approach, which depends on the circumstances surrounding the proposed application. Our intellectual property solicitors regularly assist clients with international trade mark applications before the WIPO, please click here to discuss your requirements further and for a no obligation quotation.

Trade marks: International registration rules

In order to proceed with a trade mark international registration, you must first have a successfully registered trade mark in a member country e.g. the UK. If you wish to apply for an international trade mark, you cannot do so until your original trade mark application has been approved and the trade mark registered.

The main routes to international trade mark registration are:

  • You can apply for trade mark registration in a single overseas country of interest
  • You can apply for trade mark registration in numerous countries at once, often called the 'Madrid System'.

You must ensure that no one else has already trade marked the same thing as you (or something very similar) by performing an international trade mark search. This can be done via the World Intellectual Property Organization, known as WIPO.

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FAQs

What is the procedure for obtaining an EU trade mark?
 
 

Trade mark registrations in the EU are primarily governed by the EU Trade Mark Regulations 2017 (the "Regulations"). Applications for an EU Trade mark are submitted the EUIPO which then considers that application alongside the Regulations and the absolute grounds for refusal contained therein. The most common absolute grounds that are invoked by the EUIPO are as follows:

(a) signs which do not conform to the requirements of Article 4 of the Regulations, which requires that the trade mark:

(i) distinguishes the goods/services of that undertaking from other undertakings; and

(ii) is represented in a manner which allows the EUIPO and other competent authorities/the public to determine the precise subject matter of the protection afforded to the holder.

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; or

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

Prior to submission of your EU trade mark application, our trade mark solicitors will first conduct a review of the absolute grounds for refusal under the Regulations and discuss with you how you can overcome any potential objection from the EUIPO.

Once the EUIPO has assessed whether your proposed trade mark satisfies the absolute grounds for refusal, it will then consider the relative grounds for refusal under the Regulations, of which the most relevant are as follows:

(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(b) if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Again, this mirrors the relative grounds for refusal of a trade mark in the UK; however, for the purposes of an EU trade mark application, an "earlier trade mark" covers not only existing EU trade marks, but also existing trade marks that are registered (or otherwise protected) in member states. When examining your trade mark, the EUIPO will send a surveillance letter to the holders of existing EU trade marks, notifying them of your application and informing them of their right to raise an opposition (you will also be advised of this, and the EUIPO will send you a search report detailing those existing similar or identical trade marks).

Once the trade mark has been examined by the EUIPO, providing that the trade mark satisfies the absolute grounds for refusal, an opposition period of 3 months will then comments, which allows the holder of any earlier trade mark to oppose your application. Should no opposition be raised, then the trade mark will proceed to registration. In the event that an opposition is raised, then our trade mark lawyers/solicitors will be able to advise as to the merits of the opposition and your options in defending your application.

What is the procedure for obtaining an international trade mark?
 
 

As set out above, the WIPO administers all international trade marks in accordance with the "Madrid Protocol" (which succeeded the Madrid Agreement). The Madrid Protocol is an international treaty with over 100 signifying countries (which include the UK, European Union as a supranational body, most EU member states individually, the USA and China), and the benefit of this system is that the holder of - or applicant for - a domestic trade mark can then use that domestic registration for the basis of an international application.

The trade mark application will first be processed and ratified by the home intellectual property office, such as the IPO, and submitted to the WIPO. At that stage, the WIPO will examine the trade mark, publish it in the International Register and notify the intellectual property office of the country (or countries) in which registration is sought. Thereafter, each individual country will assess and determine the trade mark application in accordance with its national laws; the WIPO essentially acts as a facilitator during this process and will keep you informed of developments.

From our experience, if you wish to obtain a registered trade mark in several territories, applying for an international trade mark via the WIPO is a cost-effective way of doing so.

Our team of specialist IP law solicitors can offer expert advice on international trade mark registration at every stage of the process. Get in touch for more information about how we can help by calling 0800 689 0831.

How to apply for a European trade mark
 
 

Trade mark registrations in the EU are primarily governed by the EU Trade Mark Regulations 2017 (the "Regulations"). Applications for an EU Trade mark are submitted the EUIPO which then considers that application alongside the Regulations and the absolute grounds for refusal contained therein. The most common absolute grounds that are invoked by the EUIPO are as follows:

(a) signs which do not conform to the requirements of Article 4 of the Regulations, which requires that the trade mark:

(i) distinguishes the goods/services of that undertaking from other undertakings; and

(ii) is represented in a manner which allows the EUIPO and other competent authorities/the public to determine the precise subject matter of the protection afforded to the holder.

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; or

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

Prior to submission of your EU trade mark application, our trade mark solicitors will first conduct a review of the absolute grounds for refusal under the Regulations and discuss with you how you can overcome any potential objection from the EUIPO.

Once the EUIPO has assessed whether your proposed trade mark satisfies the absolute grounds for refusal, it will then consider the relative grounds for refusal under the Regulations, of which the most relevant are as follows:

(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(b) if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Again, this mirrors the relative grounds for refusal of a trade mark in the UK; however, for the purposes of an EU trade mark application, an "earlier trade mark" covers not only existing EU trade marks, but also existing trade marks that are registered (or otherwise protected) in member states. When examining your trade mark, the EUIPO will send a surveillance letter to the holders of existing EU trade marks, notifying them of your application and informing them of their right to raise an opposition (you will also be advised of this, and the EUIPO will send you a search report detailing those existing similar or identical trade marks).

Once the trade mark has been examined by the EUIPO, providing that the trade mark satisfies the absolute grounds for refusal, an opposition period of 3 months will then comments, which allows the holder of any earlier trade mark to oppose your application. Should no opposition be raised, then the trade mark will proceed to registration. In the event that an opposition is raised, then our trade mark lawyers/solicitors will be able to advise as to the merits of the opposition and your options in defending your application.

What are the costs of an international trade mark application?
 
 

For an international trade mark application, the WIPO currently charges a "basic fee" of 653 Swiss Francs for a trade mark application in one class, with no colours. If you wish to register a trade mark in colour, the costs in turn would be 903 Swiss Francs. Depending on the desired territory/territories in which registration is sought, further individual fees will then also be payable. Our intellectual property solicitors will help determine the extent of the EUIPO/WIPO's fees when discussing your proposed trade mark with you.

After obtaining an international trade mark registration, additional fees will apply if you wish to expand the geographical scope of coverage, modify or renew your trade mark portfolio. Such typically takes place via a "subsequent designation" via the WIPO.

Our intellectual property solicitors act for clients in relation to international trade mark applications for competitive fixed fees, please click here should you wish to discuss this further.

What is the procedure for obtaining an international trade mark?
 
 

As set out above, the WIPO administers all international trade marks in accordance with the "Madrid Protocol" (which succeeded the Madrid Agreement). The Madrid Protocol is an international treaty with over 100 signifying countries (which include the UK, European Union as a supranational body, most EU member states individually, the USA and China), and the benefit of this system is that the holder of - or applicant for - a domestic trade mark can then use that domestic registration for the basis of an international application.

The trade mark application will first be processed and ratified by the home intellectual property office, such as the IPO/EUIPO, and submitted to the WIPO. At that stage, the WIPO will examine the trade mark, publish it in the International Register and notify the intellectual property office of the country (or countries) in which registration is sought. Thereafter, each individual country will assess and determine the trade mark application in accordance with its national laws; the WIPO essentially acts as a facilitator during this process and will keep you informed of developments.

Why should I register my trade mark internationally?
 
 

Businesses with commercial interests outside the UK should consider protecting their trade marks (whether a work mark or a figurative logo) in all countries in which they exploit or are likely to exploit such trade marks. A strong and well-protected trade mark embodies the public goodwill, brand reputation and consumer recognition. If you are using your trade mark for your business and did not carry out initial brand due diligence internationally, someone else could potentially already lawfully own the trade mark in a particular country and your later use could constitute trade mark infringement. It would also be difficult to protect your unregistered trade mark from infringement abroad and this would create issues should you want/need to take legal action against anyone who uses your trade mark without permission.

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