Protecting your trade mark abroad

Introduction

AIf registeredyou UKwant to use your trade mark protectsin yourcountries brandother inthan the UK, butyou itcan doesapply notto providethe protectiontrade overseas.mark Ifoffice youin planeach tocountry.

However, expand,European license,and orinternational sellapplication yoursystems goodsalso orexist.

Both servicescover abroad,many youcountries shouldand consideroffer securingother protectionpotential inbenefits thoseincluding:

• less territories.to Withoutpay
• less it,paperwork
• lower othersagents’ maycosts
• faster legallyresults
• easy register or use your mark abroad.
  application

To apply for an international trade mark you must already have a base application or registration in the UK.

GetInternational advicetrade mark protection

TradeYou can apply to register your trade mark protectionin abroadcountries canwhich involvehave complexsigned-up procedures,to soan youagreement, shouldcalled considerthe getting‘The adviceMadrid fromProtocol’.

The Madrid Protocol is controlled by the World Intellectual Property Organisation (WIPO), based in Geneva, Switzerland. Their website provides a list of member countries that an international application can cover.

An international application must be based on an existing trade mark attorneyapplication, or otherregistration, IPin professional.one Theyof canthe helpmember countries. If you understandapply through the bestUK routeoffice, foryour protectioninternational inapplication themust specificbe marketsidentical youto areyour targeting.

UK trade mark application or registration. You can alsofile contactyour ourinternational attachés,application whoat arethe basedsame aroundtime theas world.you Theymake supportyour andUK provideapplication, adviceor forlater UKif businessesyou operatingwish. overseas.

ChoosingNote that designations of the rightUnited levelKingdom ofin international applications filed on or after January 1, 2021 will automatically be afforded protection in Gibraltar without any need for yourapplicants tradeto mark

Youapply canto protectregister yourtheir trade mark byin applying:the territory.

• directly

  If toyou individualhave nationalmade an application for a European Union trade mark offices

• through(EUTM ) at the European Union Intellectual Property Office (EUIPO)), you can use that as a basis for EUan international mark. However, you must then make the application for that mark through EUIPO. protection
• internationallyThe viaforms Worldand Intellectualfees Propertyare Organizationon (WIPOEUIPO).

ChoosingYou thecan rightalso routeuse your UK trade mark application to claim priority when applying for an international trade mark provided this is within 6 months. This means that your later application will dependbe ontreated whereas if you planapplied toon operate,the yoursame commercialdate strategy,as andin costthe considerations.UK.

National protection

You can only apply tofor a nationalsingle mark, as the international system does not allow for a series of marks, as we do in the UK.

The cost to apply depends on which or how many countries you want your trade mark officeto inbe eachprotected countryin. There is a list of fees whereand a WIPO Madrid Fee Calculator on the WIPO website. If you need protection.any Thishelp maywith fees, please call us on 0300 300 2000.

Payments must be suitablemade ifin youSwiss onlyfrancs require(CHF) protectionto WIPO in aGeneva. smallThe numberWIPO E-Payment service should be used when in receipt of markets.a WIPO reference.

YouFor mayany beinternational ableapplication you will have to claimpay prioritya fromUK yourhandling fee of £50 for us to process the application form.

How to apply for an international trade mark

Only the holder (or his representative) of the UK trade mark may send any international application ifform.

In yougeneral, fileonly abroadthe withinholder 6(or monthshis recorded representative) of yourthe UK filingtrade date.mark Thismay meanssend yourany laterinternational application willform. Anyone else must have a link with the case to be treatedallowed asto ifsend ita wasform.

You filedcan onfind the sameapplication dateform asMM2 or alternatively from the UKWIPO application.website.

International

You tradecan markfill protectionin (Madridthe Protocol)

YouAlternatively, you can applysend foryour protectionapplication inform over(including 130form countriesFS4 throughand athe singlehandling fee of £50) to:

WIPO will not accept handwritten applications. You cannot file your application directly with WIPO.

We will check that your international application underis for the Madridsame Protocol.mark Aas singlethe applicationUK allowsmark youon towhich designateit multipleis memberbased. countriesWe youwill needalso protectionconfirm in.the Thisdate systemon iswhich managedwe byreceived your application. WIPO. will use this date as the filing date of your international application provided we are able to certify and forward the form to them within two months of filing.

After you apply

1. You canwill findreceive the a payment receipt within 5 days after sending us your MM2 application form
2. We will tell you if your MM2 onapplication ourhas website.been Therecertified isor if we have identified any deficiencies within 15 working days after you receive your payment receipt
3. If you have not received a £50certification UKor handlinga feedeficiency plusletter appropriate15 working days after receiving your payment receipt, contact 0300 300 2000
4. Your application will be examined by WIPO fees.and Theyou costwill dependsbe onnotified howof manyany irregularities. WIPO will then forward your application to the national IP office of the countries you designate.have Thedesignated. WIPOThey feeswill decide if your trade mark is acceptable for registration

MM2 applications may be abandoned if deadlines are missed. No refunds will be given.

We recommend that you check your in-box and your spam filter and junk folder to ensure you reply to any deficiency within the allowed time limits.

For information to assist you in classifying your goods and services in respect of designating Contracting Parties (dCP) can be calculatedfound using the onlineMadrid calculatorGoods and Services Manager.

For You’llfurther alsoinformation needregarding your case after it has been received at WIPO and to includemonitor theits formcurrent FS4status, information can be found using WIPO Madrid Monitor.

AlternativelyAdditionally the if you have a WIPO website account you can generaterequest analerts MM2through forthe youMadrid toElectronic use.

CheckAlert system or request e-mail notifications using the rulesElectronic forNotification Service.

If your international applications

YourAn international application:

• mustapplication may be basedattacked onin antwo existingways:

  Attack tradeagainst markthe application,base ormark registration, in onethe office of theorigin

  An memberinternational countries.

• mustapplication may be identicalcontested in totwo ways:
  1. If your UK trade mark application orchanges
  2. The international registration ifis youdependant applyfor through5 theyears on your UK office
  3. canregistration remaining in force during this period. If your UK trade mark is contested in any way, the international application will be filedaffected atin the same timeway. asAn youapplication makeor yourregistration UKcan application,be contested by opposed, revoked, cancelled, or atinvalidated aand laterit datecan lapse if renewal fees are not paid

If this happens, you are able to transform your International mark into national applications. You can alsofind usefurther aninformation EUabout this process on WIPO’s website.

Opposition in any of the designated countries

Your trade mark (EUTM)may filedbe withopposed in any of the EUIPOdesignated ascountries, but if successful, this will only affect the basisinternational forregistration in that country.

If someone opposes your mark and you withdraw or lose your challenge to an internationalopposition, mark.you Thismay musthave beto donepay throughtowards EUIPO.the other person’s costs.

Any costs incurred are set according to the law of the National Offices in the designated countries.

You may wish to seek professional advice if your international application is opposed.

European trade mark protection

AIf you want trade mark protection in countries which are members of the European Union (EU), you can apply for a European Union Trade Mark (EUTM) providesthrough protectionthe acrossEuropean allUnion EUIntellectual Property Office (EUIPO), memberbased statesin throughAlicante, aSpain.

Cost

The singletrade mark application viafee theis:

• €850 EUIPO.for Althoughfirst theclass UKof isgoods noor longerservices partor of€1000 theif EU,filed thison routea shouldpaper beform
• €50 consideredfor second class
• €150 for third class
• €150 for fourth and all subsequent classes

The collective mark application fee is:

• €1500 for filing electronically or €1800 if youfiled needon protectiona paper form
• €50 for second class
• €150 for third class
• €150 for fourth and all subsequent classes

All fees must be paid in EUEuro’s countries.directly to EUIPO.

How to apply for a European Union trade mark

You can fill in an online application form on the the EUIPO website website, or print the form and then fill it in. Costs are available on their website.

You must use one of the 23 official languages used in the the EU. You must also indicate a different second language from the 5 official languages used at at EUIPO.

EUIPO will contact you if any information is missing. You will need to respond directly to the EUIPO within the time specified.

Professional help with your application

Anyone can file a European Union trade mark application at EUIPO.

If you do not have a place of business, a real and effective establishment or your domicile in the European Union, you must appoint a representative for all proceedings before the Office.

You can only choose a fully qualified legal professional (such as a solicitor or barrister) or a specialist in IP law that is based in the EEA.