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Helping your client to protect their trade mark overseas

By Sarah Chatterley.

Your client may already know a little about trade mark protection if they have registered their trade mark in their home territory, but if they are thinking of expanding by promoting and selling their goods or services to new territories, either directly, on-line or via agents or licensees they should consider registering the trade mark in those particular countries (and also in countries to which they are planning to export in future). Here is some information about filing applications for UK or Community Trade Mark registrations.

The attorneys at Coulson & Rule are qualified to represent your clients before the UK Intellectual Property Office, the Community Trade Mark and Community Design Office (OHIM) and are also able to act before WIPO in some matters. We are of course able to liaise with and instruct our network of associates to represent you and your client in other territories, where we do not have direct entitlement to act.

Before any work is done to launch a brand into a new country it is always prudent to check that no-one is there already. Just because a trade mark is registered in one country does not automatically mean that it has not been registered by someone else in another (or something similar may exist in the new territory with which your client’s mark will conflict).

At the very start we suggest that we conduct trade mark searches to see if the way is clear. Following a review of the results, in consultation with yourself and your client, we can then file application/s accordingly, taking into account any prior rights uncovered. The wording of an application can often be carefully written to sidestep any potential problems.

Apart from filing individual national trade mark applications in foreign territories, via our associates, there are a couple of really helpful schemes through which your client can register their trade mark in a large number of countries by filing one application. There are advantages and disadvantages to each scheme (explained in brief below) so please contact us to discuss specific requirements in detail. 

1          Community Trade Mark (CTM)

This scheme covers all of the European Union countries with one application. If your Client is providing any of your goods and services to one or more EU territory, or if they are planning to do so in the near future, even by online sales or e-commerce, then you should consider suggesting they file a Community Trade Mark application. Currently there are 28 members of the European Union and more are hoping to join. 

The official fee for an application can be as low as €900 (about £815) for up to 3 classes (ask us for more information if you need details on classification).

Advantages –

  • a very attractive option for covering all of the EU in one registration, for one application fee, renewed every ten years with one fee
  • cheaper than individual national registrations for all EU territories (often cheaper than only one or two)
  • the registration expands to cover new EU members as they join
  • if you already have any trade mark registrations in EU territories these can be incorporated into the CTM registration and you may chose to allow the national registrations to lapse, thus saving renewal fees

Disadvantage –

  • A prior right (unregistered or registered) in only one EU territory may be sufficient to prevent registration. All may not be lost if this happens though as there are further strategies for obtaining registrations in EU countries unaffected by the prior right

2          International Registration System – aka Madrid Protocol

Under this system you can “cherry pick” the countries for which you need trade mark cover most urgently and then add further countries to your registration (or not renew parts of it) as and when required. You need to have a “home” trade mark application or registration to use this method, ie you need to already have a UK or Community trade mark already in place if you live in the UK or if you business trades in the UK and the International registration must be based on some or all of the goods and/or services you have already protected. Currently there are 91 members of the Madrid system, in which a UK applicant can apply, including the CTM system itself and individual European Union territories, and more are planning to join. Please ask us for a current list of members. 

Advantages –

  • a very attractive option for covering a varied, bespoke, selection of territories to suit your need, for one application fee, renewed every ten years with one fee
  • cheaper than individual national registrations (often cheaper than only one or two)
  • you can add or delete territories as your markets change
  • a prior right in one territory will not affect the progress of the application in others


Disadvantages –

  • not really a disadvantage, but you will need an application in your “home” territory upon which to base the international registration (this can be a UK or Community trade mark application)
  • again not really a disadvantage, but the international registration can be no “broader” than the “home” registration in terms of goods and services covered
  • the international registration will depend on the validity of the “home” registration for the first 5 years – if the “home” registration changes or is cancelled, then the same will happen to the international registration during this period.


This news item may contain information of general interest about current legal issues, but does not contain legal advice.