Building your protection one country at a time: where should you file

You need to strike the balance between the immediate need to ensure that your trade mark is protected in the areas in which you trade and the higher level of costs that may occur.

National

If your main business concentrates on one particular country, your best option may be to apply for a national mark in that country.

This will give you a registered trade mark that can only be protected against infringement in that country.

The most popular application is of course a UK registered trade mark. This is an application done through the UK Intellectual Property Office. To submit an application online, the UK IPO fee is £170 for a trade mark registered in one class. In addition, a further £50 will be charged for any additional class that you want to register in. This is in addition to our competitive fees to deal with the application for you. Our fees are £200 plus VAT.

This is a good step for a new business that is based solely in the UK. If you then later expand to other countries, you can look to increasing your protection at a later date. A UK application is a cost effective way of ensuring your brand is protected from copycats looking to ruin your business reputation.

Regional

This is a step up from a national mark as it allows you to protect your brand in a number of countries in one application.

Regions that may be of interest are the European Union, the Benelux countries or through institutions such as the African Intellectual Property office.

Taking the EU as an example, as this is the most common region UK businesses are interested in, you can make a single application, that may be based on your existing UK application, and protect your brand in all the member states.

It is possible at present to make an EU mark application and have your trade mark protected in the UK; however it is up to the full effect of Brexit if this continues.

We would advise to ensure you have a full EU trade mark to ensure there is no gaps in your trade mark protection.

A key here is that you must show genuine use; therefore you must ensure you will be using the mark properly to warrant this level of protection.

The fee to submit an application for one trade mark in the EU in one class of goods and services is €850, again with an additional charge of €50 for each class. Our fee is £350 plus VAT.

International

If you are looking to gain a widespread protection over your mark, then international protection through the Madrid system may be the answer.

Through the World Intellectual Property Office, you can make one application through the Madrid system for protection in as many of the 100 signatory countries as you wish.

This is a more straight forward way of applying in these areas rather than going to them directly, as in many of the signatory countries, a local agent is required to file an application.

This can be an expensive process and should not be considered until your brand is established.

If you are considering this option, please do not hesitate to contact The Trademarkroom who can take you through step by step and develop with you a clear strategy.

By Ellis Sweetenham