Brand Protection in a Global Market

Words Provided by Clare Mann, Dehns Patent and Trade Mark Attorneys

In today’s world, brands are everywhere. A good brand name can immediately distinguish one business from its competitors and, over time, the name can become an extremely valuable asset in its own right. Consequently, it is vital that businesses protect their brands and, when it comes to names and logos, trade mark registration is the appropriate method.

Registered trade mark protection is territorial and, ideally, should be secured in every country a business offers its products or services.  This can prove expensive for a company with global interests but there are strategies that can used to simplify the procedure and reduce the cost.


The European Union Trade Mark

For traders interested in selling products or services into the EU, the simplest and most cost-effective way to obtain pan-EU protection is by filing an EU trade mark application.  This involves the filing of a single application which is examined centrally and, if accepted, provides protection throughout the 28 member states of the EU (currently including the UK but this will change when the UK leaves the EU).

Applicants should be mindful, however, that an EU registration is a unitary right.  If the trade mark applied for is considered unregistrable in any country of the EU, the whole application will be refused.  In a similar vein, the owner of an earlier conflicting trade mark with legal effect in any part of the EU is entitled to oppose an EU application and, if that opposition is successful, the application will be refused in its entirety.

The Madrid Protocol

For traders looking to protect their brands beyond the EU, the Madrid Protocol can be a useful tool. The Madrid Protocol is an international agreement to which over 100 countries are signed up, including the UK.  It allows any individual or company based in one member country to apply for trade mark protection in any or all of the other member countries via an ‘International Registration’. 

A single application is filed centrally and, thereafter, the details are sent to the trade mark registries of all of the countries designated in the application. From that point on, the application is treated in each country as if it were a nationally-filed application and examined in accordance with the local laws.

Unlike an EU registration, an International Registration is not a unitary right.  If the trade mark is refused protection in one designated country, this will have no bearing on the outcome of the application in other countries.  However, an International Registration must be based on a ‘home’ mark and is dependent on that mark for the first five years. For a UK company, a ‘home’ mark is usually either a UK or (until Brexit occurs) EU trade mark registration.

Businesses interested in obtaining registered trade mark protection, both in the UK and elsewhere, are recommended to seek advice from a Chartered Trade Mark Attorney.

 

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