In today’s world, brands are everywhere. A good brand name immediately distinguishes a business from its competitors and, over time, can become an extremely valuable asset in its own right. Consequently, it is vital that businesses protect their brands and this is primarily done by means of trade mark registration. Registered trade mark protection is most commonly sought for names and logos but can sometimes also be obtained for other features that a business uses to indicate that products and services originate from it, such as straplines, colours, shapes and musical jingles.
A business will usually look to secure trade mark protection in their home country first. Then, depending on their commercial plans, they may turn their attention to other countries. Over many years in the trade mark profession, the question that I have probably been asked more than any other is whether it is possible to obtain a global trade mark registration. Unfortunately, the answer is no. Registered trade mark protection is territorial and, in general, must be applied for on a country-by-country basis. This can be expensive for a company with global commercial plans but there are strategies that can be employed to simplify the procedure and reduce the cost.
The European Union Trade Mark
For businesses interested in selling products or services into the European Union, by far the simplest and most cost-effective way to obtain pan-EU registered trade mark protection is by filing an EU Trade Mark application via the EU Intellectual Property Office (the EUIPO). This involves the filing of a single application which is examined centrally and, if accepted, provides protection throughout the 27 Member States of the EU.
Applicants should be mindful, however, that an EU Trade Mark registration is a unitary right. If the trade mark applied for is considered unregistrable in any country of the EU (for example, because it is descriptive of the applicant’s goods in one language of the EU), the whole application will be refused. In a similar vein, the owner of an earlier conflicting trade mark with legal effect in any part of the EU is entitled to oppose an EU application and, if that opposition is successful, the application will be refused in its entirety. I should add that, in certain circumstances, it is possible to ‘convert’ a refused EU application into national applications in one or more EU countries.
Switzerland and Norway are not members of the EU so an EU Trade Mark registration will not have legal effect in these countries. Post-Brexit, the same goes for the UK.
The Madrid Protocol
For businesses looking to protect their brands beyond the EU, the Madrid Protocol can be a useful tool. The Madrid Protocol is an international agreement to which well over 100 countries are signed up. The Protocol allows any individual or company based in one member country to apply for trade mark protection in any or all of the other member countries via an ‘International Registration’. The UK is a member of the Protocol as are most European countries, the EU as a single territory, the US, Canada, China, Japan, South Korea, India, Australia and New Zealand among others.
A single application is filed to the World Intellectual Property Office (WIPO) and, thereafter, the details are sent to the trade mark registries of all of the countries designated in the application. From that point, the application is treated in each country as if it were a nationally-filed application and examined in accordance with the local trade mark law.
Unlike the EU Trade Mark registration, an International Registration obtained via the Madrid Protocol is not a unitary right. If the trade mark is refused protection in one designated country, this will have no bearing on the outcome of the application in other countries. However, an International Registration must be based on a ‘home’ mark. For a UK business, this is usually a UK trade mark application/registration. The International Registration is dependent on its home mark for the first five years of its existence. If the home mark ceases to have legal effect for any reason (e.g. it fails to achieve registration or is cancelled), the International Registration will also cease to have legal effect to the same extent.
For those countries that are not within the EU nor signed up to the Madrid Protocol, national trade mark applications will be required. A Chartered Trade Mark Attorney can advise on the best way forward.
At Dehns we help our clients at every step of their trade mark journey. We have a wealth of experience in advising clients on how to obtain international protection for their trade marks. If you have any questions, please contact us.