PROTECTION CONFERRED BY REGISTERED TRADE MARK RIGHTS IS COUNTRY/REGION SPECIFIC. HOW CAN YOU ENSURE THAT THE RIGHT LEVEL OF GLOBAL PROTECTION IS OBTAINED?

There are a number of options for obtaining trade mark protection around the world. Protection may be sought in a number of countries at the outset, and/or filings may be made in additional countries at a later date. When developing a new trade mark strategy, be that for your business name or that of a new product or service, it is advisable to consider the countries in which you would like to have protection, both at the time of filing and in future. Ideally, a strategy can then be prepared to maximise your chances of obtaining rights in the countries of interest cost-effectively, whilst remaining sufficiently flexible to adapt to any changes in your business needs.

Where to file?

When considering your trade mark and in which countries to file, it can be helpful to ask the questions:

– “would it have a significant impact on my business if I couldn’t use my desired trade mark in all jurisdictions in which I wish to trade” and

–  “would it have a significant impact on my business if a third party started trading with a similar mark in the country of interest?”

If the answer to either of these is yes, then you should consider checking whether the trade mark is registrable and available for use, without infringing the rights of third parties and, assuming so, apply to register it.

Trade mark searching – avoid stepping on toes and get an early indication of registrability

Before filing for any trade mark registrations, we recommend carrying out searches, ideally in all the countries in which you wish to trade. Detailed information regarding searching can be found here. Briefly, carrying out searches can give you peace of mind that use of your mark is unlikely to infringe third party rights, as well as giving an understanding of the probability of obtaining a registration, and the possible scope thereof.

Priority Applications

An agreement between most countries around the world has been put in place to allow for deferral of the filing of applications for international rights. A initial application may be filed in one country, such as the UK. The applicant then has six months in which to file overseas applications for the same mark, goods and / or services, claiming “priority” from the initial application. Those subsequent applications can then be treated as if they had been filed on the same day as the initial application, and would normally take precedence over conflicting rights applied for in the interim. Claiming priority can be a useful way of spreading the cost of a filing programme.

Filing internationally

Applications for trade mark registrations in multiple countries can be made either by direct filing, or as part of an “International application” (sometimes called a “Madrid Protocol” application). Despite its name, an International application does not cover the whole world. Rather, the applicant must select the countries it wishes to protect from the list of Madrid Protocol member states. The International registration system covers almost all countries of economic interest, but there are some important exceptions, such as Argentina, Chile, Nigeria, Qatar and Saudi Arabia. A list of the member states can be found at https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.

Whilst the International system appears to be the obvious choice when seeking protection in multiple countries, there are pros and cons to the system. It is important to consider all the options before proceeding.

Advantages of filing an International Application:

• Cost

The International system is often more cost effective than direct filings, especially when a large number of countries are involved. Savings are made in filing fees, overseas attorney fees and translation costs.

Payment of the filing fees can be deferred by three to four months.

Renewal fees (payable each decade) are generally lower and only need to be paid in one place, making the process more straightforward.

• Flexibility

Further countries may be added to the International trade mark, after registration, though these countries would have a later filing date compared to the main application.

Disadvantages of filing an International Application:

• Need for a base application or registration.

An International trade mark requires a “base” application or registration, to which it is linked for five years. This is often the priority application. If the base trade mark is cancelled or limited, following a challenge commenced within the first five years of filing the International application, then the International application is affected in the same way. This is known as “central attack”.  In practice, central attack happens rarely, and it is possible to transform the International trade mark into national applications in the countries of interest, to avoid loss of rights. However, transformation incurs additional cost. It is therefore important to consider the risk of central attack when deciding whether to file an International application, or which application to use as the base filing.

• Time to registration

The process of obtaining protection using the International system is often longer compared to filing directly. Ideally registered protection would be obtained before you start trading in the countries of interest, and so direct filings may be better if there are imminent plans to start trading.

• Uncertainty of protection in some territories

Although the International registration systems operates smoothly in almost all Madrid member states, direct filings may be preferable in some countries. For example, in some anglophone countries of Africa (such as Sierra Leone or Zambia), applicants may experience difficulties enforcing international registrations. In China, also, direct filings arranged by local attorneys may sometimes be a better route to securing optimum protection. The Chinese trade mark classification system incorporates numerous sub-classes; where the applicant’s goods or services are highly specialised, the assistance of Chinese attorneys is often essential to ensure that the sub-classes are correctly selected, and that the description of goods and services conforms to local practice.

The European Union Intellectual Property Office (EUIPO)

In addition to the International system, a number of regional systems for filing exist, such as the EU trade mark system. Other systems exist in Eurasia and Africa. The EU trade mark system can be a very cost-effective way of obtaining trade mark protection in European countries. An EU trade mark is a right which covers all EU member states in one registration.

Again, whilst the EU route may appear an obvious choice if seeking protection in European countries, it is worth considering the options available before proceeding.

Advantages of filing an EU Application:

• Cost

Filing costs are considerably lower than filing in each EU country separately. Renewal fees (payable each decade) are also lower than paying renewal fees in each EU country.

• Use requirements

Trade marks must be used for the goods and services covered, or the registrations eventually become vulnerable to challenge from third parties on the grounds of non-use. Use for an EU mark can normally be demonstrated by use in some, but not necessarily all the EU. This can allow businesses to expand progressively across the EU, with their rights already protected.

Disadvantages of filing an EU Application:

• Conflicting marks in all EU countries may be relevant to the registration

An EUTM may be opposed on the basis of earlier, conflicting rights at the EUIPO or in any of the EU member states. The owners of such earlier rights can prevent registration of an EUTM even if they only have a valid basis for opposition in a single EU country.

Sometimes an applicant may find it hard to obtain EU-wide protection because of a mark that is similar, but commercially irrelevant, e.g. a mark registered in an EU country in which the applicant does not wish to trade.

Carrying out thorough searching across the EU before filing an EU application is therefore important. It can, for example, guide whether changes are advisable to differentiate a mark from potentially conflicting rights, before the expense of an application is incurred.

• Unitary right

It is not possible to assign an EU registration for certain countries only (although it is possible to license an EU registration in this manner).

Some notes from in-house experience

In addition to supporting many clients in building trade mark filing strategies, our GB attorneys have direct experience of how such strategies can be put into practice from working in in-house roles. Some key principles from our experience in industry follow:

• Trade mark searching may require more significant costs up-front, but the assurance it provides (being able to invest in a brand) is well worth the investment. It is particularly important if a brand is to be used across multiple jurisdictions.

• Where possible, trade mark applications should be filed well before the mark is used. This allows you to take advantage of the reduced costs of the International systems and to have confidence in the strength of the mark before starting to trade.

• When choosing a new brand name, think about countries in which you plan to trade and check that the brand name does not have an unexpected meaning, and is not descriptive of your goods and services in any relevant foreign languages.

• Where possible, try to describe the goods and services as plainly as possible. This again will mean that the trade mark is less likely to face objection, which in turn will keep trade mark prosecution costs down.

This update is for guidance only and should not be taken as legal advice. Should you have any questions on trade mark matters, please do not hesitate to contact us.