Worldwide trade mark registration

Businesses that want to protect a brand or trading name by registering it as a trade mark worldwide can find it expensive and time-consuming. Find out how to overcome the barriers, and some shortcuts you can take on the way.

If you are a business with a brand or trading name that you want to protect worldwide by registering trade marks in respect of it, it can be harder and costlier than you think – and take a long time, unless you know your way around all the options.

A business that wants to protect a brand or trading name as a trade mark on an international scale may do so in one or more ways. They can register it:

  • individually in each country, via each country's national trade mark registry; and/or
  • in every country in the European Union (EU) though one Community trade mark (CTM) registration, at the Office for Harmonisation in the Internal Market (OHIM) in Spain; and/or
  • in all or any country that has signed the Madrid Protocol through an application via the World Intellectual Property Organisation (WIPO) in Geneva.

Individual registration

There is no one central registry where you can register your trade mark and get worldwide protection. Instead, each country has its own trade marks registry – and trade mark systems are territorial in that registration of a trade mark in a national registry only protects your trade mark in that country.

This can be attractive to businesses that only wish to target specific countries – for example, countries:

  • where they sell their goods direct from the UK, via a branch there, or through an agent or distributor;
  • where they have customers they deal with remotely – selling to them via catalogues or their website, for example;
  • they plan to sell their goods or services into in the future – that are of strategic importance to them;
  • where they would otherwise be vulnerable to counterfeiters; and
  • where their goods are made, or where they import them from.

But if they want to protect it worldwide through national registrations, this is likely to be costly – it could amount to tens of thousands of pounds. And, unless you are going to use your trade mark in every country, you can easily fall foul of local rules that allow another trader to challenge your registration for non-use if you do not use it within a certain time after registration.

Save costs in Europe with a Community Trade Mark

For European trade marks, however, there is a way to reduce costs. Rather than register in every country in the European Union (EU) individually, you can register a CTM at OHIM, by making one application and paying one fee. It is then protected throughout the 28 countries of the EU. This is easier and cheaper than registering in each individual EU country.

Before applying for a CTM, you need to be as certain as you can that there will be no objection to the application from another trader anywhere in the EU. If there is a successful objection, the whole application fails. You will then have to decide whether to convert your application into separate national applications, which means you have to pay additional fees and, usually, take local advice in each country. This immediately makes the process more expensive and complicated than if applications had been made to each national registry in the first place.

Madrid Protocol option

Another option is to register under a treaty called the Madrid Protocol. You choose the countries in which you want protection (from among the 85-plus which have signed up to the Protocol, which include the UK and the USA). If successful, the registration protects your trade mark in those countries. There must be a ‘base’ registration – an existing national application or registration in the applicant’s home country. For UK trade mark owners, that will usually mean either a UK trade mark registration or a CTM. Initially, the application is made to the UK registry – the Intellectual Property Office – and the application is then administered by the World Intellectual Property Organisation.

One advantage of using the Madrid system is that there is only one application, which means costs are usually lower than multiple national applications.

Disadvantages are that registrations can take up to three years - much slower than registering in individual countries, and that you may have to appoint local agents if there are objections to your application in a particular country or countries.

As with a Community trade mark application, this means you must carefully check that your application will meet the criteria for registration in all of the countries you have chosen. The risk of failure can be particularly high if the USA is one of the countries in the application, because its registration criteria are stricter than many other countries.

Recommendation

It’s not easy or cheap to protect a trade mark worldwide, but with the benefit of specialist legal advice, and a risk assessment of the prospects of a successful registration and the respective rights and remedies that each system gives, a workable, affordable strategy can be developed to provide essential protection.

For more information on this topic, contact Rob Lucas at Shulmans on 0113 297 8941 or at rlucas@shulmans.co.uk.