Protecting your Organisation’s Trade Mark(s) Abroad

Does your organisation operate outside of the United Kingdom?

If so, have you protected your trade mark(s) in all countries in which your organisation trades or wishes to trade in the future?

For many the answer will be no, with the cost and perceived complexity of obtaining international protection often cited as the main barrier. The process may not, however, be as taxing as envisioned, with a number of options available to those looking to protect their mark(s) abroad.

Why protect your trade mark(s) abroad

There are many reasons why you should seek to register your organisation’s trade mark(s) in all countries in which they are used:

  • A broad portfolio of registered trade marks is a valuable asset which can be commercially exploited (for example, through licensing the rights to third parties). 
  • It is difficult to protect unregistered trade marks - especially abroad - and this creates (often costly) issues should your organisation need to take legal action against anyone who uses your trade mark(s) without permission. Registration of your organisation’s trade marks will act as a deterrent, and it will provide your organisation with a much sharper sword against infringers.  
  • Seeking to register your organisation’s trade mark(s) abroad should reveal whether there are any similar or identical marks already registered in the countries in which you wish to trade, and this enables you to reduce the risk of your organisation infringing a third party’s marks.

How to protect your trade mark(s) abroad

Individual National Applications

You can apply to register your organisation’s trade mark(s) separately in each country in which it uses them. The benefit of making an individual application in each country is that the application and any subsequent registration is not dependent on any other mark and you can tailor each mark and specification as appropriate for the relevant country. It can also be the quickest route to registration.

One drawback is that your organisation is likely to require a representative to act on its behalf in each country in which it wishes to register the mark. This increases the level of bureaucracy and cost involved, especially if your organisation wishes to register a broad portfolio of marks in a number of different countries at the same time.

European Union (EU) Trade Mark

If your organisation operates within the EU then you can apply to register an EU trade mark. This will provide your organisation with protection in all countries which are members of the EU (which will obviously not include the UK post Brexit).

If your organisation is the owner of an EU trade mark on the date that the UK leaves the EU it will become the owner of a comparable trade mark in the UK automatically without a further registration process or a requirement to pay any fees. If an EU trade mark application is pending on exit day, your organisation can apply to register a comparable UK trade mark within 9 months following exit day, and will retain the earlier filing date of the pending EU trade mark. The UK application will be subject to the payment of additional filing fees.

International Trade Mark   

The UK is a member of the Madrid Protocol along with another 105 members (each a “Contracting Party”), covering 122 countries in total. Pursuant to the Madrid Protocol, organisations based in the UK can apply to register a trade mark in any of the Contracting Parties through one international trade mark application.

If your organisation wishes to register an international trade mark it must first have registered, or applied to register, the exact same mark in its “home” intellectual property office (i.e. the UK IPO assuming your organisation is based in the UK), and the specification for the international trade mark must be the same as, or narrower than, the home application or registration (if a broader specification is required for a particular Contracting Party than a separate national application would be required). The international registration is dependent on your organisation’s home registration for a period of five years (if the home registration fails within that five year period, so does the international registration); it is therefore generally better to ensure that the home registration has been obtained before applying to register an international mark to reduce the risk of the international mark being cancelled.

The international application is examined by the World Intellectual Property Office (“WIPO”). If successful, the mark is published and the intellectual property office of each Contracting Party is notified.  

The intellectual property office of each Contracting Party can object to protecting the mark in their jurisdiction, although the grounds upon which they can do so are limited. If an objection is raised, or if there is opposition from a third party to the registration of the mark (for example, if a third party has a similar or identical mark already registered in the relevant country), then your organisation would need to appoint a local representative to act on its behalf should it wish to contest the objection or opposition.

There are often (but not always) cost benefits to filing an international mark. Generally, the more countries covered by an international application, the bigger the cost benefit. This is because the applicant only has to file one application in one language and pay the official fees to one office instead of filing a separate application in each country.

One of the main benefits of an international registration is that the brand portfolio can be managed through one centralised system. Therefore any changes to the international registration (for example, a change of name or address of the owner, or a change in ownership) and any renewals can be recorded and have effect by means of one procedure with WIPO and the payment of one fee thus reducing the level of bureaucracy and cost involved.

Summary

There are a number of ways you can seek to protect your organisation’s trade mark portfolio abroad, and the most suitable option will depend on the circumstances. An international trade mark filed using the Madrid Protocol can have cost savings where it is available to use.

If you are considering protecting your organisation’s trade mark portfolio abroad and would like any assistance, of if you have any queries on any issues raised in this article, please contact a member of our Commercial and IP Team who would be happy to assist.

Posted on: 07/01/2020

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

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