Differences between UK and EU trade mark applications
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At the end of December 2020, the Brexit transition period ended and the UK dropped out of the EU trade mark registration system. Those who had EU registrations at 31 December 2020 have automatically retained protection in both the EU and UK, while provisions are in place for owners of EU trade marks for which the applications were pending at 31 December to extend their protection to the UK, claiming priority from the original EU application. However, what does this mean for future trade mark applications?
For businesses who trade around Europe it will no longer be possible to rely on a single EU application to cover the United Kingdom and the (now) twenty-seven countries of the EU; instead it will be necessary to file separate EU and UK applications (and, as before, to consider filing in non-EU countries such as Switzerland, Norway and Turkey). For UK-based companies, this is likely to push trade mark owners towards making greater use of the Madrid Protocol.
There are two routes to trade mark protection in most territories. Nearly all countries have national registries, making it possible to file a direct national application (or a direct regional application such as an EU, Benelux , or Gulf Cooperation Council application). Additionally, in many territories it is possible to file a Madrid Protocol application via the World Intellectual Property Office (or WIPO) which selects, or ‘designates’, the territories of interest, leading to bespoke international protection. Most, but not all, commercially important territories, including the EU, can be designated in a Madrid Protocol application. Madrid Protocol applications must be based on an existing registration or application for the trade mark of interest which, for a UK company, will usually be a UK application or registration. Where possible, we recommend that a Madrid application be based on a registration rather than an application in order to reduce the risk of the Madrid application failing due to problems with the home application (see ‘disadvantages’ below).
A Madrid Protocol application that designates just one territory (e.g. the EU) is rarely cost-effective, but cost advantages becomes apparent fairly quickly, with three designations tending to be the tipping point between ‘not worth it’ and ‘definitely worth it’. Also worth noting is that additional territories can be designated at any time after the original application has been filed at a relatively low marginal cost. Essentially, as the protection that is sought becomes geographically broader, the more cost-effective this route becomes.
Other advantages of Madrid Procotol applications include:
It is also important to appreciate that the Madrid Procotol has a number of disadvantages:
Notwithstanding the disadvantages, the Madrid system for the international registration of trade marks is, on balance, a cost-effective and administratively straightforward route to obtaining bespoke and flexible international protection.
With the departure of the UK from the EU, many businesses will find that they wish to file both UK and EU trade mark applications, and UK applicants who wish to protect their trade marks in the EU and at least a couple of additional territories may find that the Madrid Protocol route is an attractive option. The flexibilty and affordability of the Madrid system may also encourage applicants to include other European countries such as Switzerland, Norway and Turkey, which have historically often been omitted due to the cost of filing direct national applications.
As a result, we anticipate an increase in Madrid Protocol applications, based on UK applications or registrations, that designate the EU and other territories.
Please get in touch for our expert advice on the most appropriate filing strategy to achieve optimum international trade mark protection.
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