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International trade mark
6 min read

How do I protect my brand internationally?

Trade marks – even those that apply to digital and virtual businesses – work in terms of what are called jurisdictions – or countries. This means that if you want the brand protection a trade mark affords you, you need to apply to each trade mark office, in each country you want protection in, separately. Broadly speaking…

European trade mark protection

Despite Brexit, you can still apply for what’s known as a European Union Trade Mark. This covers you for trade mark protection in the countries that still retain membership of the EU. You do this through the European Union Intellectual Property Office (EUIPO), based in Alicante, Spain.

A word of warning… in the olden days, before Brexit, a trade mark registered in the EU covered you for the UK. But then we left. As a result any EU trade marks registered as at 31 December 2020 were automatically cloned, so you got a UK trademark too. But, this means any EU trade marks registered after that date might not cover the UK, so watch out.

International trade mark protection

It is possible to apply to register your trade mark in the countries that have signed up to what’s called ‘The Madrid Protocol’. This gives you the opportunity to have your trade mark protected in more than one country, simply by filling in one application form. You do it once but, potentially, get protection in up to 128 countries.

So far so good. But there are some rules.

  • First, you have to already have an existing trade mark in one of the member countries (yes, the UK counts).
  • Second, if you apply through the UK office, your international application needs to be identical to your UK trade mark application or registration.
  • Finally, you can only apply for a single mark this way. The international system does not allow for a series of marks, as we do in the UK.

But there is a  bit of good news… If you have a UK trade mark already and then decide to ‘go international’ you can also use your UK trade mark application to claim priority. What this means is that as long as your international application is within six months of your UK registration, it will be treated as if you applied on the same date as in the UK.

You can find out more about this here by looking at the MM2-Form (that’s what you’d use to apply internationally).

How does the Madrid system work if I’m looking to register my trade marks internationally?

In many ways this system is about reducing the admin, so it’s better to think of it as one form that goes to a whole bunch of different people at the same time (like a round robin email) rather than one registration. You’re still registering your trade mark in each country/region, it’s just that they’ve all agreed to apply the same process and rules.

This is why you need to start, by considering which of the countries you want to register a trade mark in. This allows the system to work out the cost. The cost includes the basic fee plus additional costs based on where you want to register it and how many classes. Don’t worry, the system takes you through all of this with their rather handy fee calculator tool.

This is also where a trade mark law service can come in and help you make an informed and cost-effective decision.

What do I need to think about when registering a trade mark internationally?

First, within the list of countries there are three regions that you can pick. They kind of lump more than one country together in one application.

  • Pro: this might reduce your workload.
  • Con… just selecting these for an easy life could work out more expensive than individual applications to only those countries you need. These include the EU (except for Malta), benelux (Belgium, The Netherlands and Luxembourg) and the African Intellectual Property Organization (OAPI).

Second, it’s worth being aware that although you can do the same registration for a whole bunch of different countries, not everyone (most, but not all) has actually put their money where their Madrid-mouth is in terms of enacting domestic legislation to provide protection for marks done this way. OAPI, Eswatini (formally called Swaziland), Ghana, Liberia, Namibia, Sierra Leone, Zambia and Zimbabwe, for example, have not and it’s there for somewhat doubtful that you’d be as protected there as you might be if you did a stand-alone, direct application. Egypt is another country where this is likely to be a challenge.

Finally, getting your list of countries right needs some serious thought. Yes, of course, it is usually quite a simple job to add in extra countries/regions at a later date (although they will have different registration dates) but this list has an impact on more than just cost.

For example, you need to think about not just where you trade now but where you might want to and also countries with similar cultures and associated markets. For example, you might at the moment just want to trade in Australia… but New Zealand is a close market geographically and culturally. Similarly, USA and Canada. If you start to consider your consumers it’s easy to see how this might be a target market, down the line. But, it’s also easy to see how it wouldn’t be hard, for example, for someone else to take your idea from the USA (where perhaps you have protected it) into Canada (where, perhaps, you haven’t yet protected it because you aren’t yet trading there), set it up and start trading legally. Not only could this stop you expanding into Canada but it would also cost you a great deal of money, should you want to fight this activity legally… particularly if they’ve actually gone to the trouble of trade marking the brand in Canada.

Do you see where we’re coming from here? It just makes sense to think about these things up front.

Why take this route to international trade marks?

Well, we hope we’ve been able to explain why this Madrid process is somewhat easier than ploughing on with all the individual applications. But beyond this, the cost will almost certainly be less if you take the Madrid route. Not only are the individual applications less money but the cost of using a trade mark firm (like Pulse) is going to be less if they’re doing just this application, rather than needing to instruct attorneys in each country. Of course, objections still need to be handled separately and in each country, but this is much simpler when you’re only looking at one, identical application.

Is there anything else to think about for international trade marks?

To be honest, we can’t stress strongly enough that you’ll benefit from getting some expert, practical advice on international trade marks. Like so many things, while it is technically possible to manage this yourself, there’s no substitute for getting an expert on the case.

A real expert will talk to you about what your brand is doing now and what you want to be doing. A real expert will take the problem off your plate and handle the whole application process for you from start to finish – that includes doing all the checks and filing applications in the right languages. They should help to keep the cost down, as well, through approaching it with experience and insight.

Most importantly, a real expert will be able to advise at each stage of the application process, to make sure you don’t fall down at any hurdles each of the individual offices, in individual countries might throw up. They’ll handle objections and oppositions and introduce you to the right locally-based attorneys, if that’s what you need. We tend to think of it a bit like getting your hair cut… do you remember what you looked like half way through lockdown 1.0? Just because you CAN cut your own hair doesn’t mean you SHOULD… going to an expert can help to prevent costly mistakes, stop you looking stupid and make sure you actually wind up with the outcome you have in mind.

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