UK trade marks can be protected abroad using the following routes:
One filing in each country (National Route);
One filing at the European Intellectual Property Office (EUIPO) that would cover all EU member countries;
One regional filing at the Benelux Office for Intellectual Property (BOIP) that would cover the countries of Belgium, Netherlands and Luxembourg only.
One International filing at the World Intellectual Property Office (WIPO) that can cover up to 125 countries.
This route involves filing trade mark applications in each country you intend to do business in. This option is a very expensive one and should only be used in circumstances where there is no other option.
There are other routes discussed below that allow one filing to cover multiple countries.
This route would be attractive to businesses that have been established or are yet to be established in the EU member states. This route will not cover countries that are not EU member states such as Switzerland, Bulgaria, Norway and more. One trade mark filing will grant protection in all 27 EU member states namely: Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.
Who can file an EU trade mark application?
Any individual or company can file an EU trade mark application but if the individual or company does not have their domicile or principal place of business within the European Economic Area (EEA), a representative must be appointed to prosecute the trade mark application.
What is the procedure for filing an EU trade mark?
You may choose to file a fresh trade mark application in the EU or you can also claim priority from a UK trade mark application. This means that the filing date of the EU trade mark application will be the same as that of the UK trade mark application, but in order for this to happen, you must have filed the EU trade mark application within 6 months of filing the UK application.
The EU trade mark application can be filed in any of the 24 languages of the European Union expect Irish. A second language, which must be different from the first must be chosen when filing the application. However, that second language must be either English, Italian, German, French or Spanish.
The application is examined and if found registrable will be published in the journal for opposition purposes. Third parties have three months from the date of publication to file an Opposition to the registration of the trade mark. If no opposition is filed, then the trade mark will be registered.
How long does an EU trade mark last?
Any EU trade mark lasts indefinitely subject to renewals every 10 years.
What are the advantages of using the EU Route?
One filing covers multiple countries;
It is cost effective;
Registration process is smoother and faster compared to that of the International system at the World Intellectual Property Office (WIPO).
What are the disadvantages of using the EU Route?
Does not cover non EU member countries like Switzerland, Norway, Turkey and so on.
The owner of a national trade mark in one of the EU countries can oppose the registration of an EU trade mark application. If this is successful, then the EU trade mark application will fail.
An EU trade mark application may be objected to based on absolute grounds such as the fact that the trade mark cannot be registered in one of the EU countries because the trade mark is descriptive in only that EU country.
International Route (Madrid System).
With this route, a single application can cover multiple countries around the world, which is different from the EU route that covers only EU member countries. The Madrid System is made up of up to 125 contracting countries.
Who can file an international application?
Any individual or company can file an international trade mark application but they must be a national, or be domiciled or have a business in one of the Madrid member countries.
What is the procedure for filing an international application?
You would need to already have a trade mark registration (base registration) in one of the Madrid member countries before filing an international application.
If the registration you have is a UK registration for example, the international application would be filed at the UK Intellectual Property Office (UKIPO). The UKIPO will thereafter send the application to WIPO. Once WIPO is satisfied with formalities, the certificate will be issued.
After the certificate is issued, each member country you may have chosen (designated) would be informed about the issuance of the certificate (Notification Date), and will thereafter be required to carry out a substantive examination of the registration. Any objections to your registration in each country must be issued within 12 to 18 months of the Notification Date.
If there are no objections raised within the said 12 to 18 months, each country will issue Statements of Grant.
How long does an International trade mark last?
Any International trade mark lasts indefinitely subject to renewals every 10 years.
What are the advantages of using the International Route?
One filing covers multiple countries, much more than the EU route;
The entire EU can also be chosen as one of the designated countries/regions in an International application
It is cost effective, compared to filing in each country;
What are the disadvantages of using the International Route?
Does not cover countries that are non contracting parties. For example, Nigeria, South Africa, Hong Kong and Taiwan are not contracting parties.
If there are any issues with the base registration, the International application could become invalid.