How to register a trade mark worldwide

Written by Anastasia Troshkova | December 22, 2022

Trade Marks

One of the questions we frequently receive from our clients is how to register a trade mark worldwide.

There is unfortunately no single way to obtain trade mark protection for your brand in each country in the world. Trade marks are territorial, and you need to obtain a trade mark in each country separately. Each territory has its own trade mark laws, and will examine your application and approve or refuse it based on local IP registers; success in one territory will not guarantee that your application will be accepted in another. EU trade marks are an exception –  EU trade mark will grant you trade mark protection across all EU member states.

In terms of the rest of the territories, there are generally 2 ways to obtain trade mark protection overseas:

  • WIPO application

Once you have obtained a trade mark in your country of residence/domicile, you can make a single application to the World Intellectual Property Organisation (WIPO) and designate countries where you wish to obtain trade mark protection.

WIPO will examine your application for compliance with formalities, and once approved, will forward it to each of the designated territories for further examination. Each of the territories will then review your application under local laws and will either approve or reject it.

Not all countries take part in this system, but some 122 jurisdictions do (including some major jurisdictions such as UK, EU, US, Canada, China, etc.)

  • Direct applications in each country

Alternatively, you can make trade mark applications in each country directly by hiring local counsel. This usually gives you more flexibility with your trade mark application and control over them, because local counsel will advise you every step of the examination process and will help you deal with any issues that may arise (such as responding to office actions or dealing with oppositions).

Each of the above options have its advantages and disadvantages, and each can be more beneficial than the other depending on particular circumstances of the brand.

Here at Briffa we can assist you with trade mark applications both via WIPO and directly via our network of overseas agents – we will act as one-stop shop and point of contact for you and will guide you through the application process. If you are interested in protecting your trade mark internationally, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.

Written by Anastasia Troshkova – Associate

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