The UK Trade Mark application procedure
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Introduction
It's a big planet and the law protecting trade marks varies from country to country. In some places it is easier to protect and enforce your rights than others. Some countries provide some rights to first users of a mark; others afford rights strictly to the first person or company to register the mark. If you trade internationally then, if you can afford to do so, it is preferable to register your trade marks in your main markets.
Generally, there are two ways to obtain trade mark registrations around the world. Firstly, trade marks can be protected by registration in most countries of the world by way of a direct application that is filed at the national Trade Mark Registry. As an alternative, and a particularly useful option where more extensive protection is required, a trade mark can be protected in multiple jurisdictions by way of an International Registration under the Madrid Protocol which designates the territories of interest to obtain bespoke international protection.
Claiming priority
Once an application to register a new trade mark has been filed, subsequent applications to register the same trade mark in other countries that are filed within six months of the orginal application can often claim priority from the first application. Most countries will accept priority claims, and the effect of making a claim is that the later applications are deemed to have been filed on the same date as the first application. The advantage of this is that if applications for conflicting trade marks are filed during the so-called 'priority period', that is, the time between the orginal and subsequent applications, they will not block the later applications which, because of the priority claim, are treated as if they were the earlier marks. Claiming priority is not essential, but as the fees for making the claim are typically modest, we recommend that trade mark owners make use of this option where possible.
Direct applications
Seeking protection for trade marks in the UK and EU by way of direct UK trade mark applications and EU trade mark applications is discussed in our specific pages on those topics. We also act for clients who wish to protect their trade marks around the world, whether that is in just one or two countries, or more extensively.
Most countries in the world offer the possibility of registering a trade mark by filing an application in that country. There are also some supra-national schemes that simplify the process of registering a trade mark in a particular region, such as the Benelux trade mark registration which covers Belgium, the Netherlands and Luxembourg, and the ARIPO application which covers a number of African states.
The trade mark application procedure is broadly similar in all countries, although there are of course differences between jurisdictions. Applications are typically examined to check that the mark applied for is the type of mark that can be registered (examination on absolute grounds), but the extent to which applications are examined to ensure they do not conflict with existing trade marks (examination on relative grounds) varies considerably. Some trade mark registries will refuse an application if conflicting trade marks exist, for example, in China and the US, while in other countries this is considered to be a commercial decision for the owners of earlier rights, for example, in the UK. Most countries classify goods and services into classes, and a standard international classification system is widely used, although local interpretation does vary, so wording that is accepted in one country may not be allowed in another. Many countries allow multi-class applications, while those in which only single class applications are available, such as the Middle Eastern and some Asian countries, tend to be more expensive.
We are able to provide detailed advice on requirements and procedures in individual countries throughout the world, and work closely with expert advisers in all jurisdictions.
Registrations under the Madrid Protocol
As well as the option of filing direct applications, there is an international registration scheme administered by the World Intellectual Property Office (WIPO) and referred to as the Madrid Protocol. An applicant must first have an application or registration in their home territory and then an international application is filed with WIPO. While this is not always the best option, it can be an efficient and cost-effective option when seeking international protection in several or many countries. We provide an introduction to the Madrid Protocol here and a summary of the Madrid Protocol registration procedure here.
If you would like advice on, or cost estimates for, protecting your trade mark internationally, whether a single application in one country or an extensive multi-national filing program, please do not hesitate to contact us, or write directly to our trade mark attorneys Liz Lowe, Fiona Jones or Alistair Hindle.