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Once you have obtained trade mark registration in the UK or alternatively, if you trade outside of the UK, our trade mark solicitors will be able to assist you with registering your trade mark internationally. Firstly, you must consider the territory in which you wish to protect your trade mark internationally; should it be the case that you wish to obtain registration across the entirety of the EU, then it may be worth applying for an EU Trade Mark before the EU Intellectual Property Office ("EUIPO"). Conversely, should you wish to obtain registration in an EU member state of further afield (for example, in the United States of America), then it may be worth seeking an international registration, which would be primarily administered by the World Intellectual Property Organisation ("WIPO").
Our trade mark solicitors regularly assist clients with international trade mark applications before the EUIPO and WIPO, please click here to discuss your requirements further and for a no obligation quotation.
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.
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.
For an EU trade mark application, the EUIPO charges a fee of €850 for registration in one class, with a €50 fee payable for a second class and a €150 fee payable for each class thereafter. Comparatively, for an international trade mark application, the WIPO currently charges a "basic fee" of 653 Swiss franks for a trade mark application in one class, with no colours. Depending on the desired country in which registration is sought, further individual fees will then also be payable. Our trade mark solicitors will help determine the extent of the EUIPO/WIPO's fees when discussing your proposed trade mark with you.
Our trade mark solicitors act for clients for a competitive fixed fee, under which we will produce a Trade Mark Report, analysing the registrability of your proposed trade mark against any existing trade marks and the relative/absolute grounds for refusal of a trade mark under the Regulations and otherwise. Thereafter, we can assist you with dealing with the trade mark registration on a fixed fee basis. Please contact us by clicking here to discuss your requirements further with one of our trade mark solicitors and for a no obligation quotation.