In our immensely globalised world today, it is more important than ever to protect your brand’s identity beyond borders. Regardless of whether you are a small start-up, ready for your business to take off, or a well-established company with a strong reputation. It is essential to secure an international trademark if you plan to expand your business into other areas.
British citizens have the ability to accomplish this through several different options based on their specific objectives. This guide outlines how to expand a UK trademark into other countries, with a focus on 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. Now there’s individuals in Europe, Asia and America 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.
They want your success, too.
Without the necessary international protection, you could end up spending all of your hard-earned profit in attempting to win back 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 other countries. It is your first-line of defence in preserving the distinctiveness of your brand outside of your area of incorporation.
The Madrid System
The Madrid System makes it easier to register trademarks internationally by using the Madrid Agreement (1891) and the Madrid Protocol (1989). This system allows you to manage the filing process across countries with a single application. 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:
- 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
Next, you will thoroughly select the countries where you protection is necessary. Once your trademark is successfully registered in the UK and you have selected your desired countries from the list of contracting parties, you will be ready to submit an international application through the World Intellectual Property Organization (WIPO).
The standard fee structure consists of:
- a basic fee
- a supplementary fee for each class of goods or services over three, and
- a complementary fee in respect of each Contracting Party designated
3. Examination of your 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, WIPO will inform each designated country accordingly.
4. Country-specific 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. Refusal and appeal
After WIPO publishes your mark, if you are not notified of an appeal, your registration 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 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. Additionally, this system enables you to stay informed about the trademarks held by your competitors.
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 safeguard companies against domestic organizations 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 separate applications in individual countries, through region-based collective systems, or through the Madrid System, having international protection will always be an asset.
For help in expanding your UK trademarks into other countries, contact Freeman Harris Solicitors.
