Trade Mark protection around the world

Introduction

Trade mark registrations can be obtained in most countries throughout the world by direct applications. In some territories it is possible to seek protection by way of an international registration under the Madrid System.

Claiming priority

In most cases, it is possible to file a first trade mark application in a single territory (e.g. the UK) and file further applications for the same mark in other territories, within six months, and for these later applications to “claim priority” from the initial application. Where priority is validly claimed, the later application should not be invalid due only to applications filed for the first time by third parties in the intervening six months.

Direct applications

The possibility of seeking protection for trade marks by way of UK trade mark applications or EU trade mark applications is discussed in our separate pages on those topics. We also act for clients in seeking protection around the world.

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

The trade mark application procedure varies substantially around the world. Applications are generally examined to ascertain that they are the type of mark which should be registerable (examination on absolute grounds). The extent to which applications are examined and refused due to the existence of earlier third party rights (examination on relative grounds) varies considerably. Many countries classify goods and services in a similar way to the UK. Other countries (particularly many Asian and Middle Eastern countries) do not allow multiple class applications. We can provide detailed advice on procedures in individual countries where required.

Registrations under the Madrid Protocol

As well as the possibility of filing direct applications in other countries, there is an international registration scheme administered by WIPO and referred to as the Madrid Protocol which is often most cost effective when seeking protection in numerous countries. For further information on the Madrid Protocol please follow the links below.

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