Protecting your intellectual property abroad

Protecting trade marks abroad

Guide

If you want to use your trade mark in countries other than the UK, you can apply to the trade mark office in each country.

European and international application systems also exist. Both cover many countries, including the UK, and offer other potential benefits including:

  • less to pay
  • less paperwork
  • lower agents’ costs
  • faster results
  • easy application

To apply for an International Trade Mark you must already have a base application or registration in the UK. See how to register a trade mark in the UK.

Apply for international trade mark protection

You can apply to register your trade mark in countries which have signed-up to an international agreement called the 'The Madrid Protocol'.

The Madrid Protocol is controlled by the World Intellectual Property Organisation (WIPO), which provides a list of member countries that an international application can cover.

An international application must be based on an existing trade mark application, or registration, in one of the member countries, including:

  • An EU trade mark application or registration. In this case, you must make the international application for that mark through EU Intellectual Property Office.
  • A UK trade mark application or registration. In this case, you must apply for an international application through the UK Intellectual Property Office (IPO).

Filing through the UK IPO
You can file your international application at the same time as you make your UK application, or later if you wish. You can also use your UK trade mark application to claim priority when applying for an international trade mark provided this is within six months. This means that your later application will be treated as if you applied on the same date as in the UK.

The cost to apply depends on which or how many countries you want your trade mark to be protected in. There is a list of fees and fee calculator on the WIPO website. Payments must be made in Swiss francs to WIPO in Geneva.

For any international application you will also have to pay a UK handling fee of £40 for the IPO to process the application form. If you need any help with fees, you can call the UK IPO Helpline on Tel 0300 300 2000.

Use this form to file an international trade mark applications through the IPO.

You can only apply for a single mark, as the international system does not allow for a series of marks, as is the case in the UK.

From 1 January 2021, International Trade Mark registrations designating the EU are no longer valid in the UK. On this date, comparable national trade marks were created for every international registration protected in the EU before the end of transition period. See: changes to international trade mark registrations after 1 January 2021.

Apply for European trade mark protection

If you want trade mark protection in countries which are members of the EU, you can apply for:

EUTM is valid within all the member countries of the EU and gives you exclusive rights to use and protect your trade mark throughout the EU.

To apply for an EUTM, you can fill in an online application form on the EUIPO website, or print the form and then fill it in. You don't have to register for a UK trade mark first.

The EUTM application fee is:

  • €850 for first class of goods or services or €1000 if filed on a paper form
  • €50 for second class
  • €150 for third class
  • €150 for fourth and all subsequent classes

Fees must be paid in Euros directly to EUIPO.

Anyone can file a European Union trade mark application at EUIPO. However, if you do not have a place of business, a real and effective establishment or your domicile in the European Union, you must appoint a representative for all proceedings before the Office.

You can only choose a fully qualified legal professional (such as a solicitor or barrister) or a specialist in IP law to represent you. Read more about the address requirements to represent in intellectual property after 1 January 2021.

From 1 January 2021, EUTMs no longer protect trade marks in the UK. On this date, comparable UK trade marks were created for all right holders with an existing EUTM. See: EU trade mark protection and comparable UK trade marks from 1 January 2021.

Getting help

Registering trade marks overseas is a complex legal area and once mistakes are made they can't usually be rectified. It is advisable to seek specialist help from a qualified trade mark attorney in your area.