There are basically two options for seeking trade mark registrations overseas:

1. filing an application in each country or region where you want the trade mark registered, or
2. filing an international trade mark application under an agreement called the Madrid Protocol which, depending on the countries that you want protect, is generally simpler and less expensive.

The cost of filing an application directly covering one or more overseas countries varies from country to country and the process as to registration, although similar, may have some minor differences.

The Madrid Protocol allows you to file a single application and designate (by ticking a box) any one or more of the 105 member countries in which to seek protection. The office through which you filed your application will then send the application to the World Intellectual Property Organisation in Geneva, who in turn transmits the application to the trade mark office in each country or region that you designated. Each office will then typically examine the application for compliance with the local laws and if the application passes, the mark will then be protected. Some countries/regions have a period where third parties can oppose the registration of the trade mark and the trade mark will be protected if no-one opposes it.

Once your application has passed the necessary requirements, the Madrid Protocol registration will be enforceable as if it were filed as an application filed separately in that country or region.

Before lodging overseas trade mark applications, you may want to consider any translation or pronunciation difficulties with the trade mark and, if necessary, consider an alternative name in some countries to have greater market appeal to consumers there. It is also worth searching the national trade mark databases in any overseas countries of interest before filing an application.

Under the terms of an international convention to which most countries are party (the Paris Convention), an application to register a trade mark filed within 6 months of the first application to register the trade mark can be backdated to the date of filing of the first trade mark application. This means that after filing a first application to register a trade mark (say, in the UK), you can allow up to 6 months before applying to protect the trade mark outside the UK whilst maintaining priority to protect your trade mark over any third-party conflicting trade mark applications which have been filed since your initial trade mark application. You can still file applications after the six-month period, but they will not be backdated to the date of filing of the original application.

Wilson Gunn can advise on all aspects of intellectual property protection. Please get in touch to speak to a member of our team about trade mark protection.