International Trade Mark Registration

Forbes Solicitors' international trademark registration solicitors provide expert advice on the registration of trademarks in the UK and overseas.

More about International Trade Mark Registration

Our experienced trademark solicitors can help you to navigate the complex process of international trademark registration, ensuring that your trademarks are fully protected in the countries where you do business. We work with a range of clients, from small businesses to large corporations, to provide practical and effective solutions to their trademark registration needs.

What is International Trade Mark Registration

What is International Trade Mark Registration

Where trade marks are used internationally, registration of a trade mark in the jurisdiction(s) in question provides an exclusive right to use the trade mark in that jurisdiction. There are two ways of obtaining an international trade mark, by applying directly or via a centralised application with affords protection across a number of jurisdictions (such as via the European Union Intellectual Property Office or the Madrid Protocol, which is administered by the World Intellectual Property Organization).

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

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.

Why choose our international trademark registration solicitors?

Our international trademark registration solicitors have extensive experience in handling trademark registration matters across multiple jurisdictions. We provide tailored advice and guidance to ensure your trademark is protected globally. Our team is dedicated to providing efficient and cost-effective solutions to meet your needs. We pride ourselves on our excellent client service and communication, keeping you informed every step of the way. Choose us for a seamless and stress-free trademark registration process.

Who do our international trademark registration solicitors help?

Who do our international trademark registration solicitors help?

Our international trademark registration solicitors help businesses and individuals protect their trademarks and intellectual property rights globally, by providing legal advice and assistance with the registration process in multiple jurisdictions. How can our international trademark registration lawyers help? Our international trademark registration lawyers can help you protect your brand and intellectual property rights by assisting you in registering your trademark in multiple countries. We can provide guidance on the best strategy for your trademark registration, conduct trademark searches to ensure your mark is available for registration, and handle the entire registration process on your behalf. Our lawyers can also assist with trademark enforcement and litigation if necessary. With our expertise and experience, we can help you navigate the complex world of international trademark law and ensure your brand is protected globally.

Get in touch with our team of experts today to benefit from our extensive experience in providing professional legal services in International Trade Mark Registration cases to clients nationwide across the UK.

International Trade Mark Registration FAQs

How to apply for a European trade mark

To apply for a European trade mark, you must first conduct a search to ensure that your mark is not already registered. Then, you can file an application with the European Union Intellectual Property Office (EUIPO) online or by post. The application must include a description of the goods or services you wish to protect, as well as a representation of the mark. The EUIPO will examine the application and, if approved, will publish the mark in the EU Trade Marks Bulletin.

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?

To obtain an international trademark, you must first register your trademark . Then, you can apply for an international trademark through the World Intellectual Property Organisation (WIPO) by designating the countries where you want protection. The application must meet the requirements of the Madrid Protocol and pay the necessary fees. The trademark will be examined and published for opposition in each designated country before being registered.

What are the costs of an international trade mark application?

The costs of an international trade mark application vary depending on the number of classes of goods and services covered, the countries designated, and the legal fees of the solicitor handling the application. the application fee for an international trade mark registration through the World Intellectual Property Organisation (WIPO) is £300 for the first class and £150 for each additional class. Legal fees can range from a few hundred to several thousand pounds.

Why should I register my trade mark internationally?

Registering your trade mark internationally can provide protection for your brand in multiple countries, preventing others from using or copying your mark. This can help to establish your brand identity and reputation, and can also make it easier to enforce your rights if someone infringes on your mark. international trade mark registration can be done through the World Intellectual Property Organisation (WIPO).

What is the procedure for obtaining an EU trade mark?

To obtain an EU trade mark, an application must be filed with the European Union Intellectual Property Office (EUIPO). The application must include a description of the goods or services to be covered by the mark, as well as a representation of the mark itself. The EUIPO will examine the application to ensure it meets the requirements for registration, and if approved, the mark will be published for opposition. If no opposition is filed, the mark will be registered and protected throughout the EU.

What does international trademark cover?

An international trademark covers the protection of a trademark in multiple countries through the Madrid System. This system allows for the filing of a single application to protect a trademark in multiple countries, subject to the laws and regulations of each individual country. The protection covers the use of the trademark in relation to goods and services.

How does international trademark registration work?

International trademark registration is done through the Madrid System, which allows for a single application to be filed with the World Intellectual Property Organisation (WIPO) for protection in multiple countries. The application must be based on an existing national or regional trademark registration. Once approved by WIPO, the trademark is registered in the designated countries and subject to their respective laws and regulations. The registration must be renewed every 10 years.

What are the benefits of international trademark registration?

International trademark registration provides protection for a trademark in multiple countries with a single application. This simplifies the registration process and reduces costs. It also provides greater legal certainty and protection against infringement in foreign markets. international trademark registration can be obtained through the Madrid Protocol.

What countries are covered by international trademark registration?

International trademark registration covers over 100 countries that are members of the Madrid Protocol, including the UK. This allows trademark owners to protect their marks in multiple countries with a single application and fee. However, it is important to note that each country has its own laws and regulations regarding trademarks, and registration in one country does not automatically grant protection in another.

How long does international trademark registration take?

The length of time it takes to register an international trademark can vary depending on the country or region in which you are seeking protection. Generally, the process can take anywhere from 6 months to several years. the process typically takes around 6-12 months. It is important to note that the process can be delayed if there are any objections or oppositions to the registration.

What is the cost of international trademark registration?

The cost of international trademark registration varies depending on the number of classes of goods and services covered and the countries where protection is sought. The fees for filing an international trademark application under the Madrid Protocol can range from £1,000 to £5,000 or more, depending on the number of classes and countries selected. Additional fees may also apply for examination, publication, and renewal. It is recommended to seek professional advice to determine the exact cost of international trademark registration.

Can I register my trademark internationally if it is already registered in my home country?

Yes, it is possible to register a trademark internationally if it is already registered in your home country. This can be done through the Madrid System, which allows for the registration of trademarks in multiple countries through a single application. However, it is important to note that the trademark must meet the requirements of each individual country's laws and regulations.

What is the difference between international trademark registration and national trademark registration?

International trademark registration provides protection in multiple countries through a single application, while national trademark registration only provides protection in the country where it is registered. national trademark registration is done through the Intellectual Property Office (IPO), while international registration is done through the World Intellectual Property Organisation (WIPO).

What are the requirements for international trademark registration?

To register an international trademark, the applicant must have a registered trademark in their home country or a pending application for registration. The application must be filed through the World Intellectual Property Organisation (WIPO) and designate the countries where protection is sought. The trademark must also meet the requirements of each designated country's trademark laws.

Our dedicated Intellectual Property team

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Partner and Head of Department, Commercial

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Associate, Commercial

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