Registered trade marks are territorial. If you apply for a trade mark in the UK, you'll only have protection in the UK.
If you're considering taking your services or exporting your goods overseas - now or in the future - you might want to consider registering your trade mark in other countries.
There are three different ways UK trade mark owners can seek trade mark protection overseas. You can do it through:
- an application filed directly to each country
- an EU-wide trade mark application filed with the EU Intellectual Property Office
- the international application system under the Madrid protocol
European trade mark protection
If you do business, or plan to do business, in more than one European Union (EU) country, you should look into applying for a European Union Trade Mark (EUTM), previously known as the Community Trade Mark (CTM).
You can apply for the EUTM through the EU Intellectual Property Office (UKIPO), previously known as Office for Harmonization in the Internal Market (OHIM).
The EUTM system creates a unified trademark registration system in Europe, through which a single registration provides protection in all member states of the EU.
The EUTM system is parallel to the trade mark legislation of each EU member state. All rights in a EUTM registration date back to the date of filing, and the date of UK filing can be used to establish a priority date for any international application, provided this is taken up within six months.
You can apply for a EUTM through the UKIPO, or through the UK Intellectual Property Office for a £15 fee. Once registered, your EUTM can be renewed indefinitely every ten years.
Find further information from EUIPO on trade marks in the EU.
International trade mark protection
An international trade mark application is a useful way to apply for a trade mark protection in a number of different countries simultaneously.
It is possible under what's known as the Madrid protocol - a one-stop solution for registering and managing trade marks worldwide. The system is administered by the World Intellectual Property Organization (WIPO) in Geneva.
Under the protocol, if you have applied for UK registration of your trade mark you can also apply for an international trade mark through the WIPO.
International registration is protected for a period of ten years from the date of registration, after which it can be renewed every ten years provided that you pay the relevant fees. The costs depend on which country, or how many countries, you want your trade mark to be protected in.
All requests for protection in a Madrid Protocol contracting countries are examined according to the trade mark legislation and laws existing in each designated country. This means that if your international registration is granted protection in a designated country, your trade mark will have the same protection that would be extended to a national registration in that country.
An international trade mark can only cover countries that are signatories to the Madrid protocol. WIPO provides a full list of member countries that an International application can cover. Outside of this area, applications must be filed at the national trade mark office of the country you wish to protect your trade mark in.
Registering trade marks overseas can be complicated and it's a good idea to get help from a qualified trade mark attorney or patent attorney. Search for a registered trade mark attorney in the Institute of Trade Mark Attorneys' members' database.