Protecting your intellectual property abroad

Register your trade mark overseas

Guide

If you want your trade mark to be protected overseas you usually have to make applications to each of the separate countries in which you require protection. But there are two exceptions to this which can make the application process easier and cheaper.

Applying for European Union (EU)-wide protection

You can apply for a registered trade mark in each of the separate EU countries, or you can apply for a EU-wide European Union trade mark (EUTM). 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.

You can apply for a EUTM through the EU Intellectual Property Office. You don't have to register for a UK trade mark first.

From 1 January 2021, EUTMs will no longer protect trade marks in the UK. Under the Withdrawal Agreement Act, on 1 January 2021, the UK Intellectual Property Office (IPO) will create a comparable UK trade mark for all right holders with an existing EU trade mark. Existing EUTMs will still protect trade marks in EU member states. UK businesses can still apply the EU Intellectual Property Office for an EUTM. See more: EU trade mark protection and comparable UK trade marks from 1 January 2021.

Applying for an international trade mark

WIPO's Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. The UK is a contracting party to the Madrid Protocol, allowing it to take part in the Madrid System.

This means that, if you have a UK registered trademark, you can file a single application under the Madrid System and pay one set of fees to apply for protection in up to 123 countries.

From 1 January 2021, you can continue to file new international applications through the UK Intellectual Property Office (IPO). Protected international trade mark registrations designating the EU will no longer be valid in the UK. However, on 1 January 2021, the IPO will create a comparable national trademark for every international registration protected in the EU before the end of transition period. If you own an existing right, you do not need to do anything at this stage. See more on changes to international trade mark registrations after 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.