Worldwide trade mark registration

By: David Impey

Date: 14 April 2010

A friend has come up with a brilliant brand name and has asked me to “protect it worldwide” by registering trade marks. At the moment he only sells his goods in the UK, although he has aspirations to launch in the rest of Europe and the USA next. Then the world! Can we do it?

He’s out of luck if he thinks there is one central registry where you can get worldwide protection. As it stands, every country has its own trade marks registry – and systems are territorial so that, for example, registration of your UK trade mark only protects it in the UK. One way to protect the name worldwide is to register it in every country – but that costs tens of thousands of pounds. So my friend needs to be selective about which countries he wants to register in.

For European trade marks, there is a way to reduce costs. Rather than register in every country in the European Union individually, he can use the European Community trade mark system. Registering once as a Community trade mark (at the Office for Harmonisation in the Internal Market, or ‘OHIM’, in Alicante in Spain protects the brand in all 27 EU countries. This is easier and far cheaper than 27 separate registrations.

But if he has already applied to register a UK trade mark, all is not lost. He can apply to extend it so it becomes a Community trade mark. If the EU application is made within six months of his UK application, and succeeds, protection for the Community mark is backdated to the date of the UK application.

However, applicants need to be sure their marks meet the registration criteria set by each EU member state. If one of them refuses a trade mark, the whole application fails. If that happens, you have to decide whether to convert your application into separate national applications – but it costs more and, usually, you need legal advice in each country. One registered, the mark needs to be used in at least one member state within five years or it can be challenged for non-use.

Another option is the Madrid Protocol. Choose the countries where you need protection – 100-plus have signed up to the scheme, including the UK and the USA – and a single registration protects the trade mark in those countries. Initially, applications go to the Intellectual Property Office and are then administered by the World Intellectual Property Organisation (WIPO).

Madrid registrations can take up to three years – much slower than registering in individual countries – but, for anyone who wants protection in more than five states, they are much cheaper. My mate would also have a year to assess whether the countries where he wants to protect his trade mark are good enough markets before he has to pay the rest of the fees. If they are not, he does not need to proceed.

The downside to Madrid is that, if any of his chosen countries refuse the application, he only gets three months to decide whether to carry on in the others. 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.

If he wants to, his application is converted into individual country applications. Finally, if the application succeeds, he must actually use the mark in each country.

Existing registrations of UK trade marks at the Intellectual Property Office can also be extended using the Madrid Protocol, so they are protected in signatory countries the trade mark owner chooses. Apply within six months of the UK application and the Madrid protection will be backdated.

So it’s back to him now. He has the tricky job of choosing which countries he wants to go for, and which systems to apply under given the costs, timescales and consequences of failure when applying under each system.

Law Donut

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