We previously identified three main routes to Trade Mark protection and today we will look at each of these in more detail.
While many countries are members of international agreements which deal with Intellectual Property, these agreements may be interpreted differently leading to different requirements in different jurisdictions. For example, in some countries, e.g., Ireland, USA, Australia, the administrating authorities will raise earlier rights in objection to your application but in others, e.g., United Kingdom and European Union, it is left to the owners of earlier rights to oppose an application if they deem it to be confusingly similar to their own.
In most countries a trade mark registration becomes vulnerable to cancellation if it is not used for an uninterrupted period of time, which differs from territory to territory. In some countries, e.g., USA and Philippines, it is a requirement to file a declaration of use at a certain point once the registration has been granted.
The majority of countries are party to an international treaty known as the Paris convention which allows an applicant to first file an application in one country and then file in other countries within 6 months claiming priority. A ‘claim to priority’ effective backdates the date of protection afforded by a later filed application to the date of filing of the earlier application. This can be useful to establish a priority date by filing a single application, possibly in your home territory, while planning how to obtain the protection you need in other territories.
If you are only interested in using your trade mark in the countries of European Union, you may benefit from filing an EU trade mark application which would cover all 27 countries of the EU. To maintain the registration, it is necessary to use the trade mark in a “substantial part” of the EU lest the registration become vulnerable to a non-use cancellation action.
There are other regional agreements which could also be used to obtain protection in other regions of the world. For example, the African Intellectual Property Organisation (OAPI) offers a unitary right which covers 17 countries in West Africa, including Burkina Faso, Congo, Mauritania and Senegal.
There is also African Regional Intellectual Property Organisation (ARIPO) which allows individual members, mostly English-speaking countries such as Botswana, Malawi, Uganda and Zimbabwe, to be designated under a single application.
Agreements for unitary or block registrations are being discussed in other places too, such as Asia and South America, but have not yet been implemented.
One agreement which is in place and which can be used to obtain trade mark protection in countries throughout the world is the Madrid Protocol which governs an international trade mark register. At the time of writing 103 countries / territories are party to the Madrid Protocol including the United Kingdom, Ireland and the European Union. Some countries which are not members, and for which national application would therefore be necessary, include South Africa, United Arab Emirates and Saudi Arabia.
To file an international application, it is first necessary to have a home trade mark application / registration, upon which to base the international application. The home registration must be in a territory in which the applicant is a national, is resident or has a real and effective place of business. The applicant must designate the territories of interest and the application is examined in each of those jurisdictions just as a national application would be.
Since it is not necessary to appoint an address for service in the majority of designated countries unless an issue arises, an international application may have costs benefits when dealing with multiple territories. One downside of an international registration is that if the home registration is cancelled, or limited, for any reason within the first five years of the life of the international trade mark registration, that registration will be cancelled, or limited, to the same extent. If that were to happen, it may be possible to transform the international registration into national applications in the designated countries, so not all would be lost.
We would usually only recommend using the international registration system if you are looking to register your trade mark in multiple countries.
When looking to export your goods or provide your services in other countries there is no one size fits all strategy. Your individual requirements are key to planning the best way to obtain the protection you need. We strongly recommend discussing your filing strategy will a trade mark attorney. Why not make an appointment to speak with one of our trade mark attorneys to discuss your trade mark protection requirements?