International Registration via the UK/EU

If you have a business selling goods or providing services outside the UK/EU, you will be thinking about protecting your trademark in those countries, internationally.  It is important to do as many countries grant trademark rights based on who is the first party to register a trademark – that party would own exclusive rights to use and license others to use the trademark in that country.  

There are two routes to go about this.  One is to file your trademark in each country you are seeking protection in directly, with the national office of that country.

The other is to file your application via international registration (IR) through the Madrid Protocol (MP).

Madrid Protocol Filing Requirements and Costs

A “qualified owner” of an active UK or EU trademark application or registration is eligible to file an application for an IR, for the same mark and for the same (or narrower) goods and services.

You must also:

1. Be a national of the UK/EU;

2.Be domiciled in the UK/EU; or

3.Have a real and effective industrial or commercial establishment in the UK/EU.

The MP application is submitted through the UK IPO or OHIM, and the cost of the filing depends upon the countries that are designated in the application.

With regards to official filing fees, an applicant will have to pay:

(1) the basic fee of 653 Swiss Francs for the MP application;

(2) the Certification which the UK IPO or OHIM charges (fees vary depending on which office you file through); and

(3) fees associated with each designated country or jurisdiction.

One thing to note is that not all countries in the world are members of the Madrid Protocol, but you can check if your country of interest is a party on WIPO’s website.

Once the IR filing is found acceptable, it is registered with WIPO as an international trademark registration and is given a registration number and a Certificate of Registration.

However, this “registration” is misleading as each designated country still has to review and accept the application before protection is given in that country.

Once your application has been reviewed and accepted by the designated countries, the registration is valid for an initial 10-year registration period, and is renewable for additional 10-year periods.

The fact that local counsel doesn’t need to be retained for renewals also marks a significant savings in using the IR system.  You can renew your IR and in turn that will be renewed in all the designated countries.  However keep in mind that the IR is dependant on the base application (UK or EU) for five years.  If your UK or EU registration or application is cancelled, this will affect the IR.

For more information about filing a MP application, please do not hesitate to contact us!