Secure the international trademark — before it’s too late

In our immensely globalised world today, registration of an international trademark is more important than ever in order to protect your brand’s identity beyond borders.

Whether you’re a small start-up, ready for your business to take off, or a well-established company with a strong reputation, securing an international trademark application is essential if you plan to expand into other regions.

British citizens have multiple options for achieving this, based on their specific objectives. This guide will outline how to register a trademark beyond the UK, focusing on global trademark registration through the Madrid Protocol.

Why does it matter?

Imagine this:

Your brand suddenly booms. Orders are coming in every minute from Europe, Asia, America. It is everything you’ve dreamed of – until one day… a TikTok video about your brand goes viral. Suddenly, individuals in these regions are all trying to replicate your brand. Orders begin slowing down. Even your most loyal customers begin to purchase from your new competitors, who are working day and night to confuse the public into thinking they are the original creators of your products. 

They want your success, too.

Without international trademarking, you could end up spending all of your hard-earned profits attempting to reclaim your brand’s identity through intricate legal disputes.

Securing the registration of your trademark on an international scale is crucial for protecting your business against imitators and competitors in foreign markets. It is your first-line of defence in preserving the distinctiveness of your brand outside your area of incorporation.

The Madrid System

The international register of trademarks operates under the Madrid System, which simplifies the process of registering a trademark across multiple countries. It consists of two treaties: 

• The Madrid Agreement (1891)
• The Madrid Protocol (1989)

Together, these treaties form a system that allows you to manage the filing process across countries with a single application through the World Intellectual Property Organization (WIPO).

This is typically the most cost and time efficient method if you are seeking coverage in a wide variety of regions.

The 5 key steps for filing through the Madrid System are:

1. Register your trademark in the UK

• Firstly, you must conduct a comprehensive search to verify that there are no other previously registered trademarks that conflict with your desired choice.
• Once all is clear, you will meticulously select the appropriate terms and classes for your goods and/or services to ensure that your trademark is adequately protected.
• Finally, you will submit your application to the UK Intellectual Property Office (UKIPO), which will serve as your “Office of Origin” going forth.

2. Apply via the Madrid System

• You must thoroughly select the countries where protection is necessary from the list of contracting parties.
• Then, you will submit an international application through the World Intellectual Property Organization (WIPO).
• At this time, you will pay the required fees, which consist of:
  • A basic fee
  • A supplementary fee for each extra class of goods or services (the first class is included)
  • A complementary fee in respect of each Contracting Party designated

3. Examination of your trademark application

• WIPO will examine the application to ensure it meets all the criteria for approval.
• When all requirements are satisfied and the application is officially registered in the International Register of Trademarks, WIPO will inform each designated country accordingly.

4. Country-specific trademark laws

• Each designated country then individually reviews your trademark according to its own laws. The respective countries have a timeframe of 18 months to either accept or decline your application.

5. Handling refusals and appeals

• After WIPO publishes your mark, if you are not notified of a country’s refusal, your international trademark application stands.
• If you are notified of a refusal, you have the ability to employ a local right of appeal.

Benefits of the Madrid System

The Madrid System is one of the most efficient ways to register a trademark worldwide. Some advantages include:

• Cost and time efficiency 

Instead of filing separate applications for each country, the Madrid System allows you to submit a single international trademark application.

This significantly reduces the administrative burden and costs associated with filing in multiple jurisdictions.

• Centralised trademark management 

The WIPO website serves as a hub for overseeing trademark registrations and streamlining what might otherwise prove to be a complex procedure.

You have the ability to monitor the progress of your application or trademark registration and obtain in-depth details about all trademarks that are registered via the Madrid System, enabling you to stay informed of the trademarks held by your competitors.

• Simplified renewal process 

When its time to renew your trademark registration, which occurs every ten years, you can use WIPO’s simple “Renew your Registration” feature under eMadrid.

This allows you to handle all renewals centrally rather than dealing with individual renewals for each country. Before your renewal is due, WIPO will send an unofficial notice to remind you, making it even simpler to stay on track.

Alternatives to the Madrid System

While the Madrid System is a powerful tool for international protection, businesses with particular needs might explore additional options, such as:

• Direct filing in individual countries

In markets that are catered to highly specific demographics, professionals can apply to each national trademark office that they are interested in as separate applications.

• European Union Trade Mark (EUTM)

For those targeting the entire EU, a single application covers all member states.

• Regional Systems

 Certain regions, like Africa’s OAPI and the BOIP for Benelux countries, offer collective trademark systems, which can be efficient for region-specific markets.

Case Law

In the case of Hotel Cipriani SRL, v Cipriani (Grosvenor Street) Ltd [2009], there arose a dispute over a trademark between the Italian establishment Hotel Cipriani and a London restaurant. The hotel owned the UK trademark for “Cipriani.”

Therefore, it was contended that the restaurant’s use of this name led customers into confusion by implying a connection between the two entities. Ultimately, the UK High Court ruled in favor of the hotel, upholding its trademark rights and imposing an injunction on the restaurant.

This specific scenario demonstrates how trademark regulations can protect companies against domestic organisations violating their brand identity. It highlights the essential role of global trademark registration and enforcement in averting misunderstandings and upholding a company’s image across various regions.

Don’t wait any longer!

Whether you prefer to register your trademark through the Madrid system, through separate applications in individual countries, or through region-based collective systems, having international protection will always be an asset.

For help in transforming your UK trademark into an international trademark, contact Freeman Harris Solicitors.