Frequently Asked Questions

UK: Should I seek international trade mark protection?

If you market or plan to market or use your products and services in jurisdictions outside the UK, it is often advisable to register your trade marks in the relevant key jurisdictions. Trade mark rights are jurisdictional, i.e., just because you own a trade mark in one country, it does not give you rights in another. Many countries operate on a "first to file" basis, so that the owner who files for the trade mark first has priority and enforcement rights, regardless of whether they are actually using the mark in that country. There can also be squatters or counterfeiters who will take advantage of a popular brand name and use the trade mark process to interfere with your legitimate business use.

If you are manufacturing or producing goods outside of the UK, or if you have any key partnerships or customers that are located in other countries, international trade mark filings can be a good way to protect your brand and your business activities in those countries. You can select countries based on (i) where your manufacturer is located, (ii) where you have or anticipate growing a customer base and/or (iii) where you plan to open an office. If you anticipate expanding your business into another country within the next three years, it is likely worth considering a trade mark filing in that country, at least for your main brand or house mark.

International filings can be expensive, so targeting key countries of growth or expansion or where the risk of squatting or counterfeiting is higher (e.g., China) is likely the most cost-effective way to approach international trade mark filings. You can also reduce the up-front costs by filing in a few key markets first and then expanding the coverage in phases over time. There are two ways to file in foreign countries, either (i) nationally in each country or (ii) through a 'Madrid protocol' application, which is one application designating multiple jurisdictions (although you must have an existing registered 'base' trade mark (e.g., a UK registered trade mark) in order to do so). Madrid protocol applications can be more efficient than making individual national filings.

Note that some jurisdictions may require you to demonstrate that you are marketing or using the trade mark in that jurisdiction before they grant a trade mark registration, and on a regular basis after registration, to prevent trade mark squatting.

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