Protecting your trade mark abroad

Depending on the business you are involved with, global expansion may be on your agenda.

It is essential that you expand the protection of any intellectual property you have especially trade marks as it will help you to build a reputation in any country you choose to trade in. It will also prevent any third party from using your already established brand to their advantage and your detriment.

If you already have a registered trade mark in the UK, there are two additional levels of protection you can achieve.

You can apply for a Community Trade Mark which gives you protection across the European Union. You can also apply for international protection through the Madrid System.

A Community Trade Mark, due to renamed a European Union Trade Mark in March 2016, is an efficient way to gain widespread protection across a number of countries through one application. Your mark, if successfully registered will be protected in the 28 member states of the EU. Any application for the registration of an EU trade mark must be submitted to the Office for Harmonisation in the Internal Market, which again will be renamed the European Union Intellectual Property Office in March 2016, through their website. You can submit an application in paper form but this does carry a higher fee. After 23^rd March, you can no longer submit an EU trade mark application through the UK Intellectual Property Office.

The fees for submitting EU trade mark applications are payable directly to the OHIM. For an application for up to 3 classes of goods or services, the fee is €900 if the application is submitted online. A higher fee of €1050 is payable if you wish to submit the application in paper form. While this may seem a large investment, it is essential if you are looking to advantage your business into the wider EU.

International protection is also available for your mark. The best way to gain protection beyond the EU is through the Madrid system which allows you to protect your mark in all countries signed up to the Madrid Protocol through one application. This system is maintained by the World Intellectual Property Organisation, whose website contains a list of all signatory countries. Your application must be based on a previous application therefore you will need to have already registered your mark in the UK or EU before you can apply for international protection. To submit your application, you have to file it through the organisation your original mark is registered with, eg UK Intellectual Property Office if you have an UK mark or through OHIM for a Community Trade Mark.

The fees for protection internationally are substantial. They are calculated on which or how many countries you are looking for protection in. international protection is only recommended if you have built a substantial brand and have the capacity to make that kind of investment.

For further advice on where to protect your mark and whether you need protection overseas, contact Jane at The Trademarkroom

By Ellis Sweetenham