Information-hub/Trademarks/Overseas Trademark protection
Overseas Trademark protection
Trademark protection in overseas countries is processed using either the Madrid Protocol, European Union Trademark application process or applying direct to the country in which you require protection.
The international Trademark registration system (Madrid Protocol) allows for a single application to be filed in up to 100 countries. The registration process is administered centrally through the World Intellectual Property Office (WIPO).
The main advantages of registering a Trademark through the Madrid Protocol are :
There is no need to instruct attorneys (in most cases) in each country thus saving costs.
It’s a single application process and filing fee.
Additional countries can be added after the date of the original filing.
The registration process is quicker than filing in many countries.
In order to register a Trademark through the Madrid protocol, certain conditions must be met. The applicant must : be either a UK national or resident, or a UK company, or a company with a place of business in the United Kingdom - have a UK or European Union Trademark application or registration for the same Trademark.
European Union Trademark application process
A European Union Trademark application process is a cost-effective way to secure protection across 28 European Union member states in a single registration.
Also known as EUTM, a European Union Trade Mark is a unitary right. Which means the Trademark application must be accepted by all the EU member states. If any one of the EU members rejects the application, due to a conflicting prior application, registration or unregistered right, this in most cases can be used to oppose or invalidate the application and registration process throughout the EU.
Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden, United Kingdom
Applying direct to the country
If a Trademark only needs to be registered in one or a few countries or cannot be registered through the one of the International processes, it is possible to register the Trademark directly with the country / countries of interest.
Although the application and registration process varies from country to country, the process of making an application is very similar to that of the UK.
A search is carried out and the application is then examined. If the examiner determines the application to be valid, a certification of registration will be made. If the examiner objects to the application, the applicant has the right to file a defence or make amendments.