Why Should I File an International Trade Mark?

A trade mark is a word, logo, phrase, design, symbol, sound or colourway that indicates the origin of a product and distinguishes it from the goods and services of others.

A comprehensive trade mark portfolio can be one of the most valuable assets for a business. Trade mark rights are powerful, with unequalled longevity as they can last forever if correctly used and renewed. Such rights provide the owner with the ability to prevent unfair competition from others who seek to use an identical or similar brand in relation to identical or similar goods or services for which it is registered.

However, trade marks are territorial in nature and, as such, the protection they afford only extends to the jurisdiction in which the trade mark has been registered. Trade mark holders must therefore consider if they need to register their trade mark beyond the UK and, if so, in which countries.

Furthermore, before moving into other countries, it is important to assess the risk of a third party objecting to the use and registration of the trade mark based on its earlier rights. This is done through conducting trade mark availability searches. You can find more information on availability searches here.

At Ionic Legal, we regularly advise clients on the steps to take when expanding into other countries and we are able, through our correspondent foreign law firms, to obtain appropriate trade mark protection for our clients and enforce our clients’ rights.

So, why should you register a trade mark internationally?

There are a number of reasons why trade mark holders might benefit from registering their trade mark internationally.

To Expand Your Business and Protect Your Place in the Market

By filing a trade mark in a particular country, you are essentially planting your flag, which will enable you to move into that country in the future. Without such a filing, you risk third parties acquiring better rights and then being able to prevent your access to that market in the future.

As trade mark rights are geographically specific, it is possible for someone else to already be using a similar or identical trade mark to yours in another jurisdiction, even though you have registered and are using your trade mark in your home country. Registering your trade mark internationally in a proactive manner will go a long way to preventing this and, if this is not possible, will still provide you with useful information that will guide your commercial strategy.

To Protect Your Brand and Enforce Your Rights

Once you have expanded your brand into international markets, your products, services and the trade mark associated with them will likely become more desirable as your presence in these markets continues to grow. Registering your trade mark in jurisdictions that you are operating in or plan to operate in will allow you to prevent other entities from confusing customers or potential customers by using an identical or similar trade mark to you. Third parties will often try to use a popular trade mark to sell similar or identical products or services, as they can drive increased traffic to their business by using the goodwill and reputation the trade mark owner has spent time, money and effort in building. The use of your trade mark by others has the potential to damage your reputation as the products or services they offer may well be of inferior quality, which may damage your brand and reduce your potential for profit.

The market for counterfeits is incredibly lucrative both here and overseas and you may become more vulnerable to counterfeiting problems when your brand expands into international markets. This is particularly so if your trade mark is not registered internationally. Registering your trade mark in other territories, particularly those jurisdictions in which you think counterfeit products are being produced, can help you prevent illicit goods bearing your trade mark from being placed on the market.

What jurisdictions should I register my trade mark in?

You should register your trade mark in jurisdictions where you currently offer products or services under that trade mark or jurisdictions in which you plan to offer products or services under that trade mark in the near future. You may also wish to register your trade mark in jurisdictions that are known to experience problems with counterfeiting (e.g. China and Turkey) and where your products are being manufactured (otherwise you might risk third parties acquiring rights and then seeking to prevent your exportation from that country of manufacture).

However, you should be aware that some countries will require you to submit evidence of your use of the trade mark in that particular jurisdiction, or your intention to do so. Some jurisdictions, such as the US, Mexico and the Philippines, require you to submit evidence of your use of your trade mark for the relevant goods or services after a certain period of time. If you are unable to submit the required evidence, or you are unable to prove that you have been using your trade mark in that jurisdiction, you may lose your registration or incur additional costs. However, there is usually a grace period in which to use your rights in those countries and this can be relied on to protect your brand.

How do I register a trade mark internationally?

There is no simple way to globally register a trade mark in every country, so a trade mark owner must either file national applications in each jurisdiction they would like the trade mark to be protected in or make a central application through the “Madrid System”. It is worth highlighting that whilst the application process under the Madrid System is centralised, the resultant rights are a bundle of separate national trade marks.

The Madrid System is a mechanism for the international registration of trade marks and allows a trade mark holder to simultaneously seek protection for their trade mark in a large number of different jurisdictions. However, the Madrid System can only be used to protect a trade mark in jurisdictions which are members of the Madrid Protocol. There are over 100 member jurisdictions, and the full list of participating countries can be found here.

An international registration is commonly referred to as an IR, followed by a specific number, which is the designation for a registration obtained through the Madrid System. Depending on your home country and the jurisdictions in which you wish to register your trade mark, the Madrid System can provide you with a relatively easy, stream-lined and cost-effective way to register your trade mark internationally.

To use the Madrid System, you must first file your trade mark in your home country. You then have up to six months to file the international trade mark and claim “priority” from the date of your home registration.

This international application will be filed with the UK IPO, who will check it and then forward it on to the World Intellectual Property Office, known as WIPO. In this application, you will specify the countries in which protection is sought. It does not cover the whole world. As you will only need to submit one application (as opposed to several national applications if you filed individually), you will likely make significant cost savings by applying in this way.

The Madrid System also often makes the application and examination process easier and more predictable, as it provides for fixed examination periods. Under the Madrid System, designated jurisdictions will have either 12 or 18 months to grant or refuse protection to your trade mark which, in some cases, can be far quicker than the same process undertaken by national trade mark offices. The Madrid System also allows for streamlined renewal in all jurisdictions that your trade mark designates, which is both convenient and cost-effective.

However, you should be aware that your trade mark application must meet all local standards for the registration of a trade mark, not just the standards set in your home country. You must also actively protect your trade mark against challenge or cancellation, and a strong intellectual property growth and enforcement strategy will help you achieve this.

So, what are the main advantages and disadvantages of filing an international application as opposed to separate national applications?

The main advantages include:

• If you are filing in more than 2 or 3 countries, the costs are likely to be significantly lower than filing national applications in each country;
• There is a central method to renew and update trade marks which will be swifter and cheaper than having to update separate national trade marks;
• In some cases, the process to register a trade mark may be quicker than filing national applications because of the fixed examination procedures; and
• You don’t need to involve a local trade mark attorney and so this can reduce costs.

The main disadvantages include:

• The international trade mark is dependent on the existence of the “home” filing for a period of 5 years. Therefore, if the home filing is lost or not granted, the international trade mark will be lost as well. Third parties will often conduct what is known as a “central attack” which knocks out the home registration and subsequently the international one. In such circumstances, it is possible to convert the international registration into national rights, but you lose all the advantages of the international system;
• By not obtaining local advice first, it means you are more likely to run into examination issues, especially around the specification of the trade mark as the terms may be too broad or not recognised by the relevant local registry. This will increase costs; and
• Sometimes the process can take longer than some national filing systems, especially where the national systems are much more efficient, such as the UK and EU.

I would like to register my trade mark internationally. Can you help?

Our team is perfectly placed to help you register your trade mark internationally and guide you through the various hurdles that may arise. We can advise you as to how best to make your application successful and provide you with an analysis of any areas of weakness or vulnerability in your intellectual property protection strategies.

If you would like to discuss this topic further, please do not hesitate to reach out to any of our team members below.