Out-Law / Your Daily Need-To-Know

Out-Law Guide 5 min. read

Obtaining a trade mark registration internationally

A trade mark helps your customers and clients to identify your products and services. Your trade mark may be one of your most valuable assets. Although it may be already protected as an unregistered right, obtaining a registration will provide you with the broadest possible protection.

This guide is based on UK law. It was last updated in July 2018.

What is a trade mark?

Words, logos, shapes, colours, sounds and smells are all capable of being registered as trade marks. In short, a trade mark registration provides you with an exclusive right and allows consumers to distinguish the product or service you provide from those of competitors and/or third parties.

Route to registration internationally

There are three routes to trade mark registration on an international level:

  • You can apply to register your mark nationally in an overseas country of interest. This will result in protecting your mark in the respective jurisdiction only.
  • You can apply to register your mark through the European route. This will result in a unitary trade mark registration throughout the 28 member states of the European Union. See our separate advice note on obtaining a registration in the EU.
  • You can apply to register your mark simultaneously in numerous countries via a single application on the basis of an international treaty called the Madrid Protocol. We explain this route, also referred to as the 'Madrid System, in more detail below.

What is an international registration?

The route to register a mark simultaneously in numerous jurisdictions via a centrally-administered system is governed by the Madrid Protocol. Both the UK and EU are members of the Madrid Protocol, which is overseen by the World Intellectual Property Organisation (WIPO), based in Geneva, Switzerland.

The system is a convenient and cost-effective solution for registering and managing trade marks by filing a single application which can expand to up to 117 countries. WIPO publishes a list of member states on its website which includes important export markets like the US, Japan, China, India, Australia and South Korea.

The Madrid System, however, does not create a unitary right, unlike for example the EU trade mark, but a bundle of national rights in the countries designated in the application.

How is an international registration obtained?

Under the Madrid System an applicant must be a resident, domiciled or have a real and effective place of business in a member state. An application for international registration must be based on an existing trade mark application or registration (base mark), in one of the member states.

For our clients, the relevant base mark is usually a UK or EU trade mark. The applicant can designate countries in which he wishes to obtain protection, although subsequent designations can be requested at a later date.

The application for international registration must be filed through the national office of the base mark, known as the office of origin. You can claim priority when applying for an international registration, provided this is within six months of filing of the first application.

The application is examined, and if no objections arise, WIPO will issue a registration certificate. It is important to note, however, that the certificate issued by WIPO does not mean that you enjoy protection in all designated countries. This requires approval by the national trade mark offices which have up to 18 months to examine the application on a national level. If no objections are raised by the national office, and provided that no oppositions are filed, then the statement of grant is issued.

Summary of the international registration process 

  1. File base mark – usually within six months to claim priority
  2. File application for international registration through office of origin
  3. Examination by office of origin – two to four weeks
  4. If no objections, application forwarded to WIPO
  5. Examination by WIPO – two to four weeks
  6. If not objections, international registration certificate issued and application forwarded to local offices of designated countries
  7. Examination by local offices – up to 18 months
  8. If no objections, application is usually published for opposition purposes
  9. If no oppositions, statement of grant issued

Benefit of obtaining a trade mark registration

  • Provides you with an exclusive right in a name or a logo (or whichever type of trade mark you have applied for).
  • You can use it to prevent competitors and/or third parties using or attempting to register identical or similar marks/signs for identical/similar goods and services.
  • A trade mark registration can act as a deterrent to others intending to adopt identical, close or similar names.
  • It is an asset which can be licensed or franchised.
  • Registration can boost value in negotiations with investors and potential purchasers – registrations are often a key element in any sale/investment negotiations as they provide comfort that the brand is protected.
  • Provides you with an opportunity to establish and/or expand your market share in the relevant jurisdiction.

Advantages of obtaining an international registration

  • It is cheaper and easier to manage than national applications due to the centralised administration process.
  • Local associates only need to be involved if an objection is raised, or an opposition filed.
  • Extensive coverage can be obtained in up to 117 countries including important export markets like the US, Japan, China, India, Australia and South Korea. Canada is expected to join in 2019.
  • Subsequent designations can be added at a later date, although that entails a reduced term of protection as the internationalregistration and all designations have the same renewal date.

Disadvantages of obtaining an international registration 

  • Requirement of a base mark: the international registration has to be the same.
  • Dependency period: if the base mark fails during a period of five years after the registration of the international registration (for example due to an opposition or cancellation action), the corresponding international registration follows the same fate in all designated countries, although the registration can be transformed to national application(s) to preserve the registration date as the filing date.
  • Longer prosecution time: the time period from application to registration in the designated countries is often longer than in respect of direct national applications.
  • Absence of some key jurisdictions: some countries are still outside the Madrid System, for example Canada (scheduled to join in 2019), much of the Middle East and South America.

How long does it take to obtain a registration?

As a general rule, it takes approximately three to four months from filing the application to receiving the international registration certificate, assuming the application proves straightforward. However, the ultimate registration in the designated countries can take up to 18 months from the date the national office receives the application.

How long does an international registration last?

International registrations are valid for 10 years and are renewable for successive periods of 10 years. It can provide perpetual protection.

Pinsent Masons’ trade mark team has significant experience in carrying out clearance searches and registering trade marks worldwide. Should you have any questions, please do not hesitate to get in touch with the team.

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