international TRADE MARK PROTECTION

There is no such thing as a "World Trade Mark", but there is a very good system for overseas trade mark protection run by the World Intellectual Property Organisation in Switzerland.

Our experience is that International Trade Mark Applications are a cost-effective and procedurally efficient way of achieving registrations in most developed markets (with notable exceptions like Hong Kong, Saudi Arabia).  For a UK client, a single International application is filed based on a UK trade mark registration, designating up to 121 countries/territories. In practice, this will usually be key markets in the first instance, with the opportunity to add further markets later on. After the filing stage, the International application proceeds quickly to “registration”.  Then the national offices of the designated countries are notified of the International registration and conduct their own examination in accordance with local practice. Their examination reports come to us at different times. Responding can involve appointing a local attorney and costs will vary according to the objections raised.  Sometimes no objections are raised so no local attorney is required. In our experience, the US will often raise formal objections to the wording of the specification of goods and services, which can be dealt with on a fixed cost basis by a US colleague. China often finds conflicting trade marks which may need to be cancelled. Other territories, like Singapore and Australia are more straightforward. A great advantage of the International system is the ability to add protection for other countries later on i.e., after grant of an International registration by adding subsequent designations for new markets. Furthermore, if examination is unsuccessful (e.g., because of a conflicting earlier trade mark registration) then it is cost-effective to drop a designation and re-designate the same country later on.   

To arrange a meeting to discuss next steps please pick a time to suit you on: calendly.com/jdip/zoom-chat?back=1&month=2022-02