International Trademark Registration

by Kate Mcormack - Solicitor and Trademark Attorney

The guide below explains the options available for protecting a trademark internationally and how to go about obtaining international trademark protection.

Contrary to what many people believe, there is no such thing as an international trademark. Instead, applications for registrations in countries outside of the European Union and in Switzerland, Norway and Iceland, must be made through the national Registries of the countries concerned.

Getting International Protection For a Trademark

However, there is a way of applying for registrations in more than one international territory through the World International Property Office (WIPO), which can be more cost-effective depending on the number and nature of the territories involved. The WIPO will handle most of the administration involved, including liaising with the national Registry Offices. This procedure is known as making an international registration application.

An international registration application is only possible if you already have a registration application or registered trademark in one of the territories covered by the Madrid Protocol or the Madrid Agreement. A UK or CTM application/registration will count for this purpose.

The countries in which you are applying for registration must also be covered by the Madrid Protocol or Treaty and the party applying must have a real and effective commercial establishment, domicile and/or nationality in a Protocol or Agreement country.

If you cannot make an international application, you will have to proceed by making separate national applications to the countries in which you want protection. This is done through attorneys or agents in each country concerned. Your attorney/registration company will often have relationships with foreign attorneys whom they regularly deal with in this regard.

The Advantages of an International Trademark Application

There are various advantages and disadvantages to making an international application. These include the following:

Cost - Generally it is cheaper to apply via the international route if you want protection in many different territories. However, this is not always the case and you should ask your agent to prepare a comparison of the costs of the international versus the national route as this will depend on many factors.

Vulnerability - An international application is highly dependant on the national ‘base’ registration that it began with for the first five years. So if the base registration is cancelled, then the international application will fall and further costs will be involved in converting it to separate national registrations in each of the territories covered.

Time - It may take longer to secure an international registration so this may be a consideration if you need an urgent registration.

Your registration agent will be able to advise you on the best way to proceed in your particular circumstances.