Guide to International Trade Marks  [Printable Version]

What is an International Trade Mark?

Do you trade in countries other than the UK? If the answer is “yes” you need to consider the protection of your trade mark in those countries.

Trade mark rights are “territorial”, meaning that one company can own a mark in the UK and an entirely unrelated company can own the exact same mark for the exact same goods or services in another country. Just because you have registered your mark in the UK, it does not necessarily follow that you have any rights in the other countries where you trade.

There is a way by which a trade mark can be protected internationally under a single registration. Imaginatively, this is called an “International Registration”, and this system of registering marks is governed by what is known as The Madrid Protocol.

The system is really quite straightforward. With a “home” application filed or a registration already completed at the UK Trade Marks Office, an International Registration can then be filed and as many or as few member countries as are required can be designated under that Registration. The only requirements are that the mark for which the International Registration is filed must be exactly the same as the UK filing, the list of goods/services must be no wider than the UK filing, and the countries that are designated must be party to the Madrid Protocol*.

International Registrations have, to a significant extent, removed the need to register marks on a national basis and certainly our advice is that if you need to protect your mark in other countries you should take advantage of the International Register. Moreover, there are long-term benefits to be obtained from replacing existing national rights with an International Registration.

The benefits of an International Registration compared to national registrations are clear:

• Cost
  It is far less expensive to protect a mark by way of an International Registration than by way of national registrations. Cost savings are made both at registration and also on renewal. See the attached schedule of fees.

• Record keeping and administration
  With a single registration to maintain and renew, it becomes much easier to manage your trade mark portfolio.

The rights that arise from an International Registration are exactly the same as those that arise from a national registration.

*Members of the Madrid Protocol - March 2008:-

Albania, Antigua and Barbuda, Armenia, Australia, Austria,Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, European Union (CTM), Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Iran (Islamic Republic of), Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Madagascar (w.e.f. 28/04/08), Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Netherlands Antilles, Norway, Oman, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, San Marino, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Swaziland, Sweden, Switzerland, Syrian Arab Republic, The former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Vietnam, Zambia