How to register your trade mark overseas

Written by William Miles | February 25, 2021

Trade Marks

Do you remember “abroad”? In the midst of the coronavirus it’s hard to think much beyond your own street but I assure you it’s still there. In fact it’s quite a big deal and it’s full of new markets for your business to exploit. But, I hear you ask, what about brand protection? Will trading overseas put your brand at risk of infringement?

Well the honest legal answer to that is; yes, possibly. And so before you start shipping to distant corners of the earth it’s important to register your brand name in these new territories in advance. Fortunately there’s an international filing system which can help a great deal with that. It’s called the “Madrid Protocol” and it allows applicants to use an international filing registry called “WIPO” (the World Intellectual Property Office) to register their trade marks in a large number of countries who are signatories to the protocol.

This method of registration allows you to use the trade mark application from your home country (assuming that country is a signatory to the Madrid Protocol) and designate it in as many or as little of the other countries that are also signatories as you would like, subject to the fees due for each of those countries. What this means in practice is that you could register your trade mark in the UK and then, as your business grows, apply to register it in the EU, US and China, all of whom are signatories to the Madrid Protocol. Your application goes through the central registry of WIPO and is then examined by the trade mark offices in each of your chosen jurisdictions. The big advantage of this system is the cost, as it works out as cheaper than filing applications on a direct basis in each jurisdiction. It also makes things like renewals and assignments far simpler (and therefore cheaper) as they too are managed via WIPO.

However, not every country has signed up the system and so if, for example, you need protection in the UAE, that will require an individual application in that country via local agents.

Fortunately, Briffa is on hand to manage all of your national and international trade mark filings, via the Madrid protocol or otherwise, just email to discuss this further.

Written by Will Miles, Partner


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