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Do you need international protection?

18 Feb 2022 | 2 minute read

As trade mark rights are territorial, it is important when adopting a new brand to consider which territories or countries you wish to seek protection in. An existing UK or EU trade mark registration does not provide protection around the world to allow you to prevent others from using an identical or similar brand.

When taking steps to file or use a new brand, consideration should be given to carrying out a clearance search to identify any barriers to the use and registration of the brand in each country.

What routes are available?

When applying to register trade marks internationally, there are two routes to protection:

A national trade mark application in each jurisdiction.
An international trade mark application via the Madrid Protocol designating the countries for which protection is required.

Below, we set out some useful information on the international system.

What is the Madrid Protocol?

A business or company can file a single international application for its brand and pay one set of filing fees if:

it is based in, or has a business connection to, a country/region that has signed up to the Madrid Protocol (i.e. the UK) or Agreement; and
has a home trade mark application/registration in that country (referred to as a base mark).

Under this system, it is possible to designate up to 122 countries.

How does the Madrid Protocol Work?

The application should be filed at the trade mark office of the applicant's home country/region based on its base mark (i.e. the UK Intellectual Property Office). The home office will then check the details of the application and forward it on to the World Intellectual Property Organisation (WIPO).

WIPO will carry out a brief examination of the trade mark application to ensure the form has been completed correctly and the correct filing fee has been paid. If no issues are raised, a registration certificate will be issued by WIPO and the application will be forwarded to each of the national offices of the designated countries/regions listed in the application.

The application will then be examined by the national offices according to their national trade mark laws.

Once the application has been accepted in each jurisdiction, the proprietor will secure a bundle of separate national trade mark rights (very much in the same way as if it had registered them separately on a country by country basis).

What are the advantages and disadvantages of the Madrid Protocol over separate national applications?

Reduced filing and registration fees. Depending on the number of countries involved, the costs should be significantly less than applying for separate national applications in each country/region.
No need to instruct foreign agents. In straightforward applications there is no need to use foreign agents, unless there is an objection or opposition raised.
Recordals are made easier. Recordals of change of name, change of ownership etc are dealt with centrally by WIPO. This is cheaper and easier than having to file individual recordals in each country/region.
Quicker route to registration. Protection in some countries/regions can be obtained more quickly than applying for national applications as strict time limits are set.
Option of adding countries/regions. It is possible to add additional countries/regions after the application has been filed, but rights will only be secured at the relevant designated date.

Central attack. An international registration remains dependant on the base mark for a period of five years from the date of registration. Therefore, if the base mark is abandoned, cancelled or successfully opposed or invalidated during this period, the international registration will also be automatically cancelled. This is known as a central attack. If this were to happen, it is possible to convert the unaffected designations into national applications which will incur further filing fees.
Lack of involvement from local agents can increase the prosecution costs incurred after filing. When filing international applications based on a single trade mark specification, it is more likely that you will receive objections to the specifications which will need to be handled by local agents. If separate national applications are filed through local agents, it is often possible to avoid such objections by preempting the issues in advance and amending the trade mark specification before filing. Therefore, with international applications, we expect more objections to the single and non-bespoke specification.
Slower route to protection. Although for many countries the route to protection is much quicker via the Madrid Protocol, for some countries it can take longer to obtain protection via this route.
Not all countries are covered. Not all countries are covered by the Madrid Protocol. If the countries are not covered, you can file separate national applications instead.

What are the advantages and disadvantages of the Madrid Protocol over separate national applications?

Reduced filing and registration fees. Depending on the number of countries involved, the costs should be significantly less than applying for separate national applications in each country/region.
No need to instruct foreign agents. In straightforward applications there is no need to use foreign agents, unless there is an objection or opposition raised.
Recordals are made easier. Recordals of change of name, change of ownership etc are dealt with centrally by WIPO. This is cheaper and easier than having to file individual recordals in each country/region.
Quicker route to registration. Protection in some countries/regions can be obtained more quickly than applying for national applications as strict time limits are set.
Option of adding countries/regions. It is possible to add additional countries/regions after the application has been filed, but rights will only be secured at the relevant designated date.

Central attack. An international registration remains dependant on the base mark for a period of five years from the date of registration. Therefore, if the base mark is abandoned, cancelled or successfully opposed or invalidated during this period, the international registration will also be automatically cancelled. This is known as a central attack. If this were to happen, it is possible to convert the unaffected designations into national applications which will incur further filing fees.
Lack of involvement from local agents can increase the prosecution costs incurred after filing. When filing international applications based on a single trade mark specification, it is more likely that you will receive objections to the specifications which will need to be handled by local agents. If separate national applications are filed through local agents, it is often possible to avoid such objections by preempting the issues in advance and amending the trade mark specification before filing. Therefore, with international applications, we expect more objections to the single and non-bespoke specification.
Slower route to protection. Although for many countries the route to protection is much quicker via the Madrid Protocol, for some countries it can take longer to obtain protection via this route.
Not all countries are covered. Not all countries are covered by the Madrid Protocol. If the countries are not covered, you can file separate national applications instead.

In summary

Overall, an international trade mark application can produce significant cost savings to filing separate national applications but be prepared for more prosecution issues and costs along the way.

Want to know more?

Our Intellectual Property Team are available to help you with any questions you have regarding international trade marks and can support you with your applications whichever route you take. Please get in touch with the contacts below or follow the additional links:

Find out more about intellectual property