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International trademark and EU TM protection for company and brand names

Companies have three main options when seeking trademark protection for their company, product and brand names in overseas territories. They can choose to register national trademark rights in key territories, opt for the Europe-wide European Trade Mark (EU TM) or file an International registration (IR) under the Madrid Protocol.

UPDATE: What will be the impact on EU TMs of the UK's vote to leave the EU?

While there are many advantages to a strategy of registering national trademark rights, the vast majority of companies will opt to pursue an EU TM or IR route due to the cost benefits of such applications.

This is a basic introduction to the trademark registration process. For details on Novagraaf’s specific trademark services, including searching, watching, national registrations, portfolio management and enforcement support, click here for our services overview page. To contact one of our trademark attorneys or to review their expertise in your sector, click here.

Registrations: the EU TM route

The EU TM system offers trademark protection for company and brand names in all the member states of the European Union (EU). It is administered by the European Union Intellectual Property Office (EUIPO), and enables applicants to obtain a Europe-wide right via one single application. If Europe is a key market for you, you might also wish to consider additional registrations for European countries that sit outside the EU; for example, Switzerland.

UPDATE: What will be the impact on EU TMs of the UK's vote to leave the EU?

Registrations: the IR route

Any company that operates globally will likely also have an eye on key overseas territories, such as China, India and the US. The IR system can play a key role in this respect, as it enables companies to register trademark rights in countries that have signed up to the Madrid Protocol – which include the US, India, China and Switzerland. The Madrid Protocol and IR system is overseen by the World Intellectual Property Organisation (WIPO), and the process enables applicants to obtain rights in designated countries via one single application.

An application for an IR must be based on an initial national application in one of the member countries (e.g. a UK trademark application or registration), and you can file an IR application at the same time as you make the national application or any time after (but within six months if you wish to claim priority).

As with national applications, you will need to indicate the class of goods and services for which the application is being made, respond to any oppositions that are raised, and pay a regular renewal fee in order to keep the mark in force.

For more on obtaining a national right, click here.

Trademark registration: further information

You can find out more about trademarks and the processes for obtaining, enforcing and exploiting trademark rights, here. For information on Novagraaf’s trademark services, including searching, watching, national filing, anti-counterfeiting and enforcement support, click here for our services overview page. Alternatively, contact our customer support team, using the contact form at the top right of this page.