Frequently Asked Questions on International Trademarks
It is a common misconception that once you have registered a trademark or design right in a single territory (such as the UK or the EU), that this will provide sufficient protection in other countries around the world. This is not the case. If your business is reaching out to a global market, or if you have plans to extend your market into new countries, then you will also need to protect your trademarks and designs in those territories. It is important to consider international registration early. If you leave it too late, you risk losing the right to use your trademark or design in a target territory. This may be because a third party has already registered the same (or a confusingly similar mark) in that area or, in the case of design rights, because you may be time-barred from registering your design if you fail to file an application soon enough after the date of your first territorial registration.
Can I register an international trademark?
There is no such thing as an international trademark. However, there are systems in place which enable an individual to register a trademark in a number of countries through a single registration. The UK is a member of the Madrid Protocol, a system implemented by the World Intellectual Property Organisation (WIPO). As such, an individual or company in the UK can use this system to apply to register a trademark in any countries or territories which are also members. [hyperlink]
Which countries can I register my trademark in?
It is possible to apply to register your trademark in any country that has a trademark system, by contacting an attorney in that territory. However, since the UK is a member of the Madrid Protocol, it is also possible to make an application to a number of countries through a single application via the Madrid Protocol. Over 80 countries or territories are party to the Protocol [hyperlink]. If you would like us to help you make an international application, please visit our help page [hyperlink].
Can anyone use the Madrid Protocol system to make an international application?
An individual or a company in a territory which is a member of the Protocol may make an application. However, before doing so you must either own a national or regional trademark, or have an application pending. Since the EU is a member of the Protocol, this means that anyone living or working within the European Union with a national or Community trademark (or pending application) may use the Protocol to make an international application.
What happens to my international registration if my home registration is cancelled or cannot be registered?
If this happens during the first five years of your international registration, your international registration rights will be extinguished. In this case you would have to register your trademark nationally in each individual country.
If I have a trademark registered in the UK, does this protect my trademark in other countries?
No. Trademark protection only extends to the territory or country in which it is registered. If you intend to market your product or services in countries outside the UK, you should consider applying for a Community trademark or making an international application. A Community trademark affords you protection throughout the 27 member countries of the EU [hyperlink] through a single registration process. Using the Madrid Protocol enables you to protect your trademark in up to 80 countries via a single application.
If I have registered my trademark in a number of countries, can I add countries later if my business expands?
Yes. A subsequent designation can be made to extend your trademark protection to other countries.
Can I make a national and international application at the same time?
No. You must make a national or regional application before making an international application.
What will it cost to make an international registration?
The cost will depend on the number of countries or territories in which you register your trademark, which countries you choose (as costs may vary depending on the country), and how many classes of goods of services you wish to register your trademark under.
Can I register a different mark on my international application from my UK trademark?
No. The mark on your international application must be identical to your national or regional trademark in terms of appearance, any indications such as shape or colour, and the goods and services under which it is (or will be) registered.
How long does an international registration last for?
It lasts for 10 years, and may be renewed for further periods of 10 years on payment of renewal fees. It is possible to choose only to renew your trademark in some of the countries you originally applied for. However, it is not possible to remove any classes of goods or services in the renewal process.
How does international registration work?
International registration allows a trademark owner to register their mark in a number of countries through a single application. If a number of countries have been designated, the trademark owner will end up with a bundle of distinct national registrations. As a result, any action for infringement of an international registration must be dealt with in the individual country concerned.
Do all the countries I have chosen in my application have to accept my trademark for the application to be successful?
No. Each country will decide independently whether to accept or refuse to protect your trademark.
Why would a country refuse to protect my trademark?
A country may refuse to register your trademark if an earlier mark exists in that territory which is the same or confusingly similar.
How long will it take to register my trademark internationally?
It depends on the individual countries you have designated in your application, and whether the marks encounter any complications. To give some kind of indication of the time involved, you should not expect registration to be completed in under a year and a half.
Do I have any international protection while my application is pending?
No. However, the date that the international application is made in your regional or national Office will be the date of your international registration. This will be important if any disputes subsequently arise.