International trademark registration and searching

Posted on by

Trademarks are territorial, which means they only protect you in the countries in which you have registered them. So, a UK trademark registration gives you rights over your name just in the UK.  So, if you operate within a global market, you will need to extend your basic registration to some other countries.

Online means international
Online businesses, by virtue of being on the internet, already have international exposure and even if your company is based in the UK selling your products via a website to other countries would mean you are trading there.

With this in mind it may be worth looking into the international aspects of your branding before starting to use the name or logo. To extend your name protection to other jurisdictions, it is possible to use the Madrid Protocol application to apply for registration to countries that are members of the Madrid Protocol.

Priority date
Once your UK application has been submitted you will be given a filing date. This date is crucial because if you apply to extend your rights to other countries within 6 months of this filing date, you would have priority over other applications submitted after you filed your base application.

Madrid Protocol application
The application itself is lodged with the World Intellectual Property Organisation (WIPO) in Geneva (see WIPO website for list of countries).  At the time of writing not all countries are parties to the Protocol — Canada and South Africa are not parties. In the application, you name the countries where you require protection.  Please see list of the countries within the Madrid system.

Official fees are payable for each country selected.  We have a useful Madrid protocol calculator, so you may get a good idea of the overall costs involved in bringing a Madrid application, as the official fees are the main element of the cost. Then there is a period of 18 months in which the national registry offices or other trademark owners may raise objections to your application.

There are many advantages of registering through the Protocol, in terms of ease of administration, cost savings, and flexibility. The basic fee for the application is in Swiss Francs and additional fees are payable depending on the number of countries in which you seek to register your mark. It is always possible later to add countries as and when you need to, but this is more expensive than covering all your desired countries in a single application.

Comparison with EU trademark
Once you file an application under the Madrid system, if objections are raised in some countries that you are unable to overcome, your mark will not be accepted in those countries. However, unlike the EU trade mark your application will continue to be acceptable in other countries unless there are valid objections in any of those countries.

International Searching
Before proceeding with a trademark registration internationally it is possible to conduct an international search to reduce the risk of failure. This could involve searching the national trademark registers of the countries in which you are interested in registering a trademark. Trademark searching is essentially an exercise in risk management.  If you are an established mark, a search may be less important, than if you are just launching a new product or business.