Trade mark filing strategy post-Brexit

On 31st December 2020, the Brexit transition period ended and the UK dropped out of the EU trade mark registration system. Those who had EU registrations at 31 December 2020 automatically retained protection in both the EU and UK, albeit now with two separate registrations, while owners of pending EU applications were given provision to extend their protection to the UK. However, what are the options for those who had yet to file?

For businesses who trade around Europe, including the UK, the option no longer exists of relying on a single EU trade mark registration. Instead, separate applications must be filed in the EU and UK (plus, as before, other non-EU European countries such as Switzerland, Norway and Turkey). For UK-based companies, we have seen an increase in the use of the Madrid Protocol due to the cost and administrative advtanges it offers when seeking international trade mark protection.

There are two routes to trade mark protection in most territories. Nearly all countries havea national trade marks register, making it possible to file a direct national application (or regional application such as in the EU and Benelux). Additionally, in many territories it is possible to file a Madrid Protocol application via the World Intellectual Property Office (or WIPO) which selects, or ‘designates’, the territories of interest, leading to bespoke international protection. Most, but not all, commercially important territories, including the EU, can be designated in a Madrid Protocol application. Madrid Protocol applications must be based on an existing registration or application for the trade mark of interest which, for a UK applicant, will usually be a UK application or registration.

A Madrid Protocol application that designates a single territory (e.g. the EU) is rarely cost-effective, but cost advantages become apparent as the number of territories increases, with three designations tending to be the tipping point between ‘not worth it’ and ‘definitely worth it’. Also worth noting is that additional territories can be designated at any time after the original application has been filed at a relatively low marginal cost. Essentially, as the protection that is sought becomes geographically broader, the more cost-effective this route becomes.

Other advantages of Madrid Procotol applications include:

• The cost of designating a territory is typically less than the cost of filing directly at the relevant IPO
• Local counsel need not be instructed in the designated territories unless the application encounters examination objections or oppositions. Since many designations proceed to registration without difficulty, this can keep post-filing costs to a minimum. This does come with a caveat, however (see 'disadvantages' below)
• A single renewal fee is payable centrally for all designations, once registration has been granted
• The possibility of adding and removing designations during the lifetime of the International Registration allows trade mark protection to be tailored to reflect the trade mark owner's requirements.

It is also important to appreciate that the Madrid Procotol has a number of disadvantages:

• The ease of designation can encourage the filing of applications without taking local advice, which may lead to unexpected issues, and unanticipated costs, that might have been avoided with direct national applications filed through a local representative. For this reason, we always recommend taking local advice before filing in core markets: while this removes some of the cost advantages associated with a Madrid Protocol application, it can also reduce the risk and associated costs of filing applications for unregistrable or otherwise problematic trade marks
• There are limitations on who is entitled to file or own a Madrid Protocol trade mark
• Obtaining protection can be slow compared to direct-filed applications, for example, an EU application
• Unlike direct US applications, a US designation cannot be filed on the basis of actual use, which may have implications in the event that conflicting marks already exist in the US
• The International Registration obtained via the Madrid Protocol registration is dependent on the home application or registration for the first five years. This means that if the application or registration on which the Madrid application was based fails for any reason, the International Registration will also fail. While the individual designations can be transformed into regular national rights, this is a costly and inconvenient process

Notwithstanding the disadvantages, the Madrid Protocol for the international registration of trade marks is, on balance, a cost-effective and administratively straightforward route to obtaining bespoke and flexible international protection.

With the departure of the UK from the EU, many businesses will find themselves in the position of needing to file both UK and EU trade mark applications, and UK applicants who wish to protect their trade marks in the EU and at least a couple of additional territories may find the Madrid Protocol route to be an attractive option. The flexibilty and affordability of the Madrid system may also encourage applicants to include other European countries such as Switzerland, Norway and Turkey, which have historically often been omitted due to the cost of filing direct national applications

Please get in touch for our expert advice on the most appropriate filing strategy to achieve optimum international trade mark protection.