Trade Mark protection around the world

Trade Mark protection around the world

Introduction

Trade marks can be protected by registration in most countries of the world by way of direct applications at the national Trade Mark Registries. As an alternative, protection can be obtained in many jurisdictions by way of an International Registration which designates the territories of interest to obtain bespoke international protection.

Claiming priority

When the first application to file a particular trade mark is filed, for example, in the UK, it is generally possible to file further applications for the same mark in other territories that 'claim priority' from the initial application, where the subsequent applications are filed within six months of the initial application. Any number of subsequent applications can claim priority. Where priority is validly claimed, the later applications will not be prejudiced by any applications for conflicting applications that might be filed during the six month 'priority period'.

Direct applications

Seeking protection for trade marks by way of direct applications in the UK and EU is discussed in our pages on those topics. We also act for clients who wish to protect their trade marks around the world.

In most countries it is possible to register a trade mark by filing an application in that country. There are, however, some supra-national schemes, for example, Benelux trade mark registrations cover Belgium, the Netherlands and Luxembourg, ARIPO applications cover various African states, and so forth.

The trade mark application procedure is broadly similar throughout the world, although there are of course differences between jurisdictions. Applications are nearly always examined to ascertain that the mark applied for is the type of mark that should be registered (examination on absolute grounds). However, the extent to which applications are examined and refused due to the existence of existing third party rights (examination on relative grounds) varies considerably. Most countries will classify goods and services into classes, and many use the same international classification system as the UK. Many countries will allow multi-class applications, while others, particularly in Asia and the Middle East, do not.

We are able to provide detailed advice on requirements and procedures in individual countries throughout the world, and work closely with expert advisers in all jurisdictions.

Registrations under the Madrid Protocol

As well as the option of filing direct applications, there is an international registration scheme administered by the World Intellectual Property Office (WIPO) and referred to as the Madrid Protocol. This can be a cost-effective option when seeking international protection in several countries. For further information on the Madrid Protocol please follow the links below.

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