Deciding trade mark jurisdiction

A trade mark functions to be a mark of origin, it serves to distinguish goods or services of one undertaking to those of another. To be capable of this function, a trade mark needs to be distinctive. Trade marks that are devoid of any distinctive character shall not be registered.

As trade marks are territorial, the jurisdiction of the trade mark is also an important issue to take into account.

A UK trade mark registration, as the name suggests, only covers the UK. The law for UK trade marks is contained in the Trade Marks Act 1994, this Act implements the Council Directive (EC) 89/104, the purpose of which is the harmonisation of trade mark law throughout the European Union.

A Community trade mark is a single registration that provides protection in all Member States in the European Union.  Regulation 40/94 is repealed and consolidated by Regulation 207/2009 and contains the law for registration of a Community trade mark.

It is possible for international registration with the Madrid Protocol. This protocol allows for the designation of countries for protection, however the countries must be signatories to the protocol. This effectively allows for a number of national registrations.  The law is contained in the Trade Marks Act 1994 and the Trade Marks (International Registration) Order 2008.

When deciding proposed jurisdictions various factors should be taken into account such as where is the mark likely to be used now and in the future. The costs for maintaining registration should also be considered. Maintaining a UK trade mark would be cheaper in comparison to a bundle of international registrations, however the greater the jurisdiction the greater the protection.

It is also advisable to carry out a thorough trade mark search for the proposed jurisdictions.  The search will identify any earlier conflicting marks. For example there could be a similar mark in the USA but not in the European Union, thus a Community trade mark would have more chance of a successful registration. ]

By Sam O'Toole