Protecting your Trade Mark Abroad

Protecting your trade mark abroad can often be a laborious process, given that you need to submit an application to each country within which you want to protect that mark. That said, it’s vital to protect your IP in relevant territories – and there are time and cost savings to be made.

There are European and International systems in existence, that allow you to apply to multiple territories at one time. This can often mean simplified application processes, reduced fees, and faster results.

Here’s more information as to how to successfully protect your mark abroad.

The Madrid Protocol

The Madrid Protocol is an international system which allows you to register a mark in numerous territories who have signed up to the protocol. Governed by the World Intellectual Property Organisation (WIPO), there are currently 128 territories registered and companies can file an application to register within any of these territories, so long as they have a and application of registered trade mark within one of these territories (the “base application”). The trade mark you then submit via the Madrid Protocol must be identical to the mark of your base application or registration.

An International Registration can be a priority application, but it does not have to be.  A prirority application means that  if you apply for an international trade mark within six months of submitting your first application for the mark , the international application will be treated as if it was applied for on the same date as your first application.

An advantage of an International Registration, is there is a single point for administrative procedures such as filing and renewal procedures, which means there is often a significant costs saving over separate national applications.  Although, each designated country will carry out a examination of the application in accordance with their standard examination process, if no objections are raised, it is not necessary to appoint a local attorney in many designated countries.  This can represent a significant cost saving.

It is also possible to add designations to an International Registration at a later date, as your product market expands.  Later designations will not benefit from the original filing date, but will benefit from the simplified administrative procedures.

The Process

An application for an international trade mark must be made by the holder of the base application or registration, or their appointed representative.  The application will specify the mark, the goods and services covered (which cannot be broader that the goods and services covered by the base application) and the countries to be designated.  It is possible to designate some regional applications within the International application too, including a European Union application. 

The application is filed through the national office of the base application who will then check that the international application is identical to the mark of the base application, before submitting the International application to the WIPO.

After submission of the application, you should find out if the application has been certified or if there are any deficiencies within the application, within 15 days of receipt. The application will then be examined by the WIPO who again will check for any irregularities and provide an opportunity to correct them if any are discovered.

Thereafter, the WIPO will pass it on to the national or regional IP offices within the territories you designated in your application. Within these territories, your application will be examined and  if allowed by the designated office, can be opposed by third parties.  Local professional advice may be required if any objections are raised of the application is opposed in any given territory.

European Union trade mark protection

Arguably an even simpler process, but one which includes fewer territories, you can apply for a European Union Trade Mark (EUTM) via the EUIPO – the European Union Intellectual Property Office which is based in Alicante, Spain.

Unlike with the WIPO, an application for a European Union application is filed directly at the EUIPO.  When filing, it is necessary to specify the mark the type of mark, the goods and services to be covered and also specify a second European language.  A representative within the EU must also be appointed. The European Intellectual Property Office will then examine the application, as any national office would.  If the Examiner has objections, the applicant will be given an opportunity to file arguments and/or amendments in reply.  If accepted, the application is published for third party opposition.  Should the application proceed to grant, the registration will cover all countries in the European Union.