Out-Law Guide | 10 Jul 2018 | 5:12 pm | 5 min. read
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:
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
Benefit of obtaining a trade mark registration
Advantages of obtaining an international registration
Disadvantages of obtaining an international registration
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.