Trade Marks, Part III: Routes to protection.

There are 3 main routes to trade mark protection; National trade mark applications; European Union Trade Mark (EUTM) applications; and International (Madrid) trade mark applications. Below, is a high-level introduction to each one:

1.National applications. 

These are filed with the national trade mark office of any given jurisdiction and, once registered, provide jurisdiction specific protection. Generally, this is the recommended approach if you are looking to protect your trade mark in a small number of jurisdictions. If you are looking for more extensive protection, then you may want to consider an EUTM and/or an International (Madrid) application (see below) - filing multiple national applications can become expensive and difficult to manage.

2.EUTM applications.

These are filed with European Intellectual Property Office (EUIPO) and, once registered, provide protection in all Member States. They are a good option if you are looking to obtain protection in the EU at a reasonable price; they are much cheaper than obtaining multiple national registrations and, ultimately, EUTMs are easier to administer as they are centrally managed by the EUIPO.  This route isn’t without risk though. For one, if an application fails in one Member State, it fails in all of them, and recent data suggests that around 20% of EUTM applications are challenged. If an EUTM fails, there is the possibility of converting to national applications, but this is likely to significantly increase the cost of your trade mark strategy and the complexity of your portfolio.   

3.International trade mark applications, using the Madrid system.

These are managed by the World Intellectual Property Office (WIPO) and allow applicants to designate up to 130 countries. They are a cost-effective way of securing international protection and they are flexible, allowing applicants to pick and choose countries of interest and even add countries at a later date. They also provides applicants with the option of covering off the EU with a single designation, meaning that they are another option to consider for EU protection on a budget. That said, one of the biggest risks with this option is cost escalation given that, if your application is opposed in any designated jurisdiction, you will need to instruct a local trade mark attorney.   

Point to note: to be able to file an international application you must first have a national application (in a country which is a signatory to the Madrid Protocol) on which to base it.

What’s the best route to take?

There are arguments for and against each option and the best route for your business will depend on your budget, key markets, and growth strategy as well as any third-party trade marks in your jurisdictions of interest. 

Top Tip:

Creating a global trade mark portfolio is challenging. Engage an IP professional from the outset to create a strategy that works best for your business.

Disclaimer: Re-think Legal is a boutique legal consultancy providing businesses with legal support. The information contained in this blog is simplified and must not be taken as a definitive statement of either the law or practice of any given jurisdiction and does not constitute legal advice.