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International Trade Marks


Lawdit Solicitors - Expert Author

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26 May 2010

I often get asked why trade marks are important and why a business should spend funds securing one. I always point out the fact that a business without a name is not really a business (not one that can command any acknowledgment or associated goodwill anyway). If a business spends x amount of years trading and securing a solid reputation in its field and suddenly finds its use of the name challenged this can have devastating effects. So too could it be if a competitor starts using that name.

A trade mark registration is therefore an important asset to any business and should be secured at the same time as the bricks and mortar of the premises or the domain name from which the business will trade. It is an asset to the business and a security over the use of a name (and prevention of others from using the name).

With the rise of the internet and the growth of international trade, companies increasingly offer their goods and services abroad and in markets outside of UK or EU Community.

So can you protect your business name outside of the UK/ EU. Yes.

A good starting point for extending protection for a name to countries outside of the EC is through the Madrid protocol. This enables owners of UK or Community trade marks to extend protection for their marks to other countries party to the Protocol (currently 84 countries). This is administered through the World Intellectual Property Organisation (WIPO).

The majority of the individual countries which make up the EU are also members of the Protocol. Therefore excluding these countries brings the number of countries available down around 60.

Popular countries which are members include Norway, Iceland, Switzerland, USA, Australia, Japan, China and Singapore.

Applications are initially made through the registry where the basis application is held. This is then sent to WIPO who disseminate the application through the national registries in question. WIPO first examines the application under its procedural requirements before forwarding the application on to the national registries of the countries in which registration for examination under their own laws. I

If a problem arises in respect of a particular country at this stage, this will not affect any of the other countries included in the application.

The advantage of this system is that it provides an administrative holding point for all your additional trade mark registrations and negates the need for you to track down a trade mark lawyer in the countries in question to register your trade mark for you. In this way it also simplifies the renewal of the registrations throughout their life. In some cases the requirements imposed by the various countries are in fact less strict than if you were to apply directly to the national registry itself; for example the US trade mark office usually does not allow an application to reach registration until the applicant has provide to its satisfaction that the trade mark is being used in the US market. However when the USA is included in an international application, the applicant simply has to declare that he has an intention to use it in the USA; the applicant is then allowed a period of five years before use most be proven.

In order to take advantage of this system the details of your application must match the details of your UK/ Community trade mark registration in all material details i.e. mark, owner and classifications; it is possible to include less classes but you cannot add classes. If you want to move ahead with other countries quicker than waiting for your UK or CTM registration would allow it is also possible to use a UK or CTM application as the basis. However there is some element of risk associated with using this option rather than using a registration. This is due to the fact that the international application will be wholly dependent on your UK/ CTM so that if for some reason you UK/CTM application fails to reach registration, your international application will also fail.

Jody Tsigarides is a Solicitor who specialises in IP law.


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2010-05-29 22:00:31 in Legal Articles

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