Overseas Trademark Applications
Thus after filing a UK trademark application, applications for overseas trademark protection can be backdated to the date of filing the UK application.
Of course applications for overseas trademark protection can be filed at any time. The advantage in claiming priority (when possible) is that the overseas applications that are backdated are less likely to run into problems with conflicting trademarks.
Overseas Trademark Filing Options
There are three main routes to obtaining trademark protection outside of the UK:
1. International (or ‘Madrid’) Trademark Application
2. EU (otherwise known as ‘Community’) Trademark Application
3. Direct National Applications
(Or a combination of any or all of the above.)
Each of these routes is looked at in more detail below.
International (‘Madrid’) Trademark Applications
An international trademark application (also known as a Madrid application) is a single application designating multiple territories. Most countries of interest to trademark owners can be covered by a Madrid application, although there are some notable exceptions, such as Canada and India). A full list of the countries that can be covered by a Madrid application may be found here: Madrid Countries
The cost of a Madrid application increases with the number of countries designated and the number of classes in the application. However, it can be a very cost-effective way to cover a lot of countries, particularly if no problems arise.
The application is examined by the national trademark office of each country designated and if objections are raised then an attorney must be appointed in that country to help deal with the objections.
There are some downsides to Madrid applications. In order to file a Madrid application it is necessary to have a first national or regional application/registration (normally for UK applicants this is a UK or EU registration) upon which the Madrid application is ‘based’. If that basis registration for any reason ceases within its first 5 years (for example because of an invalidation action) then any Madrid registration is lost in its entirety (although it can be converted into separate national applications, at a cost).
Normally, if trademark protection is desired in only one or two of countries outside of the EU then direct national applications are recommended.
European (‘Community’) Trademark Applications
Community trademarks cover the whole EU with a single application resulting in a single registration. For a full list of EU countries please see here: EU Member States
The Community trademark system is very cost-effective, although it does have some drawbacks.
The Community trademark is a unitary right, meaning that it either covers the whole EU or doesn’t exist. This means that if there is a conflicting earlier right, registered or unregistered, in one EU member country then that earlier right can be used to oppose or invalidate any Community trademark application/registration throughout the EU. If that happens then it is possible, at a cost, to convert the EU application/registration into separate national applications.
The Community trademark is good value at around, and normally the best option for applicants who seek trademark protection in any EU country outside of the UK.
Direct National Trademark Applications
If you are only interested in protection in a few countries (outside of the EU) then this may be a better choice than a Madrid application.
Costs differ from country to country owing to large differences in official fees between territories. However, as a rough guide, obtaining a national registration provided no serious problems arise is normally in the region of £800 to £2500.
Please contact us for an estimate of filing costs for any type of trademark application or for a free consultation.