Registering a trade mark outside the UK

Helen Harmel, Associate

Trade mark rights are territorial, protection extending only to the country or region in which the mark is registered.

As there is no single worldwide trade mark granting protection in every jurisdiction, businesses must register in each country where they want to have protection.

Three routes to international trade mark protection

Businesses seeking international protection generally have three main options available to them:

1. Apply directly to national trade mark registries

This can be the best option where you only want protection in one or two countries and is particularly suited to businesses with limited overseas operations or specific target markets.

2. Apply for a European trade mark

If you want protection in Europe, you can apply for a European Union Trade mark (EUTM) which provides protection in all 27 EU member states though a single application.

Generally, this is cheaper than individual applications to multiple member states.

3. Apply internationally under the Madrid Protocol

The Madrid System is a centralised filing and registration system managed by the World Intellectual Property Organization (WIPO).  It can be used to apply, using a single application, for protection in over 130 territories which results in a bundle of national registrations.  The applicant will designate which countries it wants protection and the costs will vary accordingly.  It is generally a cost effective option where the applicant wants protection in multiple countries.

Not only is an international application cheaper to file than individual national applications, it also simplifies and reduces the cost of maintenance in the long term, and has the advantage that you can add extra jurisdictions at a later date should you wish by subsequently designating additional states (these designations will receive a later date of protection from when they are filed).

The only situation in which we would recommend not using the international route would be if the UK registration was thought likely to be attacked by a third party, since the international case is wholly reliant on the UK “home” case for its first 5 years, therefore if the home case failed, wholly or in part, the international case would fail to the same extent.

Whichever option you choose, if you apply for an overseas trade mark within six months of your UK filing date, you can claim “priority”. This has a backdating effect, meaning your later overseas application will be treated as if it was filed on the same date as your UK application.

If you need advice filing for trade mark protection, please get in touch with our intellectual property team on [email protected], or at 0161 832 3434.