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.
How do you trade mark a name or a brand internationally?
There are three different ways UK trade mark owners can seek trade mark protection overseas. You can do it through:
- national applications
- regional applications, such as for EU trade marks
- international applications under the Madrid protocol
National trade mark application
You can apply directly to Industrial or Intellectual Property Offices of individual countries to secure trade marks in their jurisdiction. A few things to keep in mind if you pursue this route:
- you may need to translate each application into the national language
- you will need to pay the national application fees
- you may need to work with a IP agent or attorney to make sure that the application meets national requirements
EU trade mark application
If you do business, or plan to do business, in more than one European country, you should look into applying for a EU trade mark.
The EU trade mark creates a unified trade mark registration system in Europe, through which a single registration provides protection in all current and future member states of the EU.
If you choose to apply for a EU trade mark, keep in mind that:
- an online EU trade mark application costs €850
- you can file an application in just one language to cover all the EU countries
- you can renew your EU trade mark indefinitely every ten years
You can apply for a EU trade mark through the EU Intellectual Property Office, or through the UK Intellectual Property Office for an additional fee.
International trade mark protection
An international trade mark application is possible under the Madrid system, which is managed by the World Intellectual Property Organization (WIPO) in Geneva.
What is the Madrid protocol?
The Madrid system provides a cost-effective and efficient way for trade mark owners to protect their marks simultaneously in up to 116 countries that have ratified the Madrid protocol.
The system allows you to file one trade mark application:
- with a single office (in national or regional trade mark office)
- in one language
- with one set of fees and in one currency
- without requiring a local agent to file the application on your behalf in the designated countries
The Madrid protocol also allows you to modify, renew or expand your global trade mark portfolio through one centralised system.
If you apply under the Madrid protocol, your trade mark application will be examined according to the rules of the designated country. If accepted, your trade mark will gain the same protection in that country as if it was registered directly with the country’s trade mark authority.
Your trade mark will last for ten years, after which you will be able to renew indefinitely provided that you pay the relevant fees.
How much does a global trade mark cost?
The cost of an international trade mark registration includes the basic fee (653 Swiss francs or 903 Swiss francs for a mark in colour) and additional costs depending on:
- whereyou want to protect your mark
- how many classes of goods and services will be covered by your registration
If you have applied for UK registration of your trade mark, you can apply for an international trade mark through the WIPO.
Madrid protocol countries
An international trade mark can only cover countries that are signatories to the Madrid protocol. Currently this covers 116 countries. See WIPO's list of member countries.
If you intend to use your trade mark in a country which does not subscribe to the Madrid system, you should file a trade mark application with the national trade mark office of the designated country.
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. Find a chartered trade mark attorney.