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This publication is available at https://www.gov.uk/government/publications/protecting-your-uk-intellectual-property-abroad/protecting-your-trade-mark-abroad
If you want to use your trade mark in countries other than the UK, you can apply to the trade mark office in each country.
However, European and international application systems also exist.
Both cover many countries, including the UK, and offer other potential benefits including:
- less to pay
- less paperwork
- lower agents’ costs
- faster results
- easy application
To apply for an International Trade Mark you must already have a base application or registration in the UK.
2. International trade mark protection
You can apply to register your trade mark in countries which have signed-up to an agreement, called the ‘The Madrid Protocol’.
The Madrid Protocol is controlled by the World Intellectual Property Organisation (WIPO), based in Geneva, Switzerland. Their website provides a list of member countries that an international application can cover.
An International application must be based on an existing trade mark application, or registration, in one of the member countries. If you apply through the UK office, your international application must be identical to your UK trade mark application or registration. You can file your International application at the same time as you make your UK application, or later if you wish.
If you have made an application for a EUTM at EUIPO, or have a registered EUTM, you can use that as a basis for an international mark. However, you must then make the application for that mark through EUIPO. The forms and fees are on EUIPO’s website.
You can also use your UK trade mark application to claim priority when applying for an international trade mark provided this is within 6 months. This means that your later application will be treated as if you applied on the same date as in the UK.
You can only apply for a single mark, as the international system does not allow for a series of marks, as we do in the UK.
The cost to apply depends on which or how many countries you want your trade mark to be protected in. There is a list of fees and a fee calculator on the WIPO website. If you need any help with fees, please call us on 0300 300 2000.
Payments must be made in Swiss francs (CHF) to WIPO in Geneva. The WIPO E-Payment service should be used when in receipt of a WIPO reference.
For any international application you will have to pay a UK handling fee of £40 for us to process the application form.
2.2 How to apply for an international trade mark
Only the holder (or his representative) of the UK trade mark may send any international application form.
In general, only the holder (or his recorded representative) of the UK trade mark may send any international application form. Anyone else must have a link with the case to be allowed to send a form.
You can find the application form MM2 or alternatively from the WIPO website.
Alternatively, you can send your application form (including form FS4 and the handling fee of £40) to:
Intellectual Property Office
10 Victoria Street
Fax 01633 817777
WIPO will not accept handwritten applications. You cannot file your application directly with WIPO.
We will check that your international application is for the same mark as the UK mark on which it is based. We will also confirm the date on which we received your application. WIPO will use this date as the filing date of your international application provided we are able to certify and forward the form to them within two months of filing.
We will contact you within 10 working days of filing the Form MM2. We will tell you if your international application has been certified or if we have identified any deficiencies.
We recommend that you check your in-box and your spam filter and junk folder to ensure you reply to any deficiency within the allowed time limits.
If you have not received a response by the 10th working day from filing your international application please contact us on 0300 300 2000. Failure to respond within the allowed time limit could result in the international application becoming abandoned. No refunds will be given.
2.3 After you apply
Your application will be examined by WIPO and you will be notified of any irregularities. When the application is in order, WIPO will forward your application to the national IP office of the countries you have designated. They will decide if your trade mark is acceptable for registration. Further information to assist you in classifying your goods and services in respect of designating Contracting Parties (dCP) can be found using Madrid Goods and Services Manager.
2.4 If your international trade mark is contested
An International application may be attacked in two ways:
Attack against the base mark in the office of origin
An International application may be contested in two ways:
- If your UK trade mark application changes
- The international registration is dependant for 5 years on your UK registration remaining in force during this period. If your UK trade mark is contested in any way, the International application will be affected in the same way.An application or registration can be contested by opposed, revoked, cancelled, or invalidated and it can lapse if renewal fees are not paid.
If this happens, you are able to transform your International mark into national applications. You can find further information about this process on WIPO’s website.
Opposition in any of the designated countries
Your trade mark may be opposed in any of the designated countries, but if successful, this will only affect the international registration in that country.
If someone opposes your mark and you withdraw or lose your challenge to an opposition, you may have to pay towards the other person’s costs.
Any costs incurred are set according to the law of the National Offices in the designated countries.
You may wish to seek professional advice if your international application is opposed.
3. European trade mark protection
If you want trade mark protection in countries which are members of the European Union (EU), you can apply for a European Union Trade Mark (EUTM) through the European Union Intellectual Property Office (EUIPO), based in Alicante, Spain.
The trade mark application fee is:
- €850 for first class of goods or services or €1000 if filed on a paper form
- €50 for second class
- €150 for third class
- €150 for fourth and all subsequent classes
The collective mark application fee is:
- €1500 for filing electronically or €1800 if filed on a paper form
- €50 for second class
- €150 for third class
- €150 for fourth and all subsequent classes
All fees must be paid in Euro’s directly to EUIPO.
3.2 How to apply for a European Union trade mark
You can fill in an online application form on the EUIPO website, or print the form and then fill it in.
You must use one of the 23 official languages used in the EU. You must also indicate a different second language from the 5 official languages used at EUIPO.
EUIPO will contact you if any information is missing. You will need to respond directly to the EUIPO within the time specified.
3.3 Professional help with your application
Anyone can file a European Union trade mark application at EUIPO.
If you do not have a place of business, a real and effective establishment or your domicile in the European Union, you must appoint a representative for all proceedings before the Office.
You can only choose a fully qualified legal professional (such as a solicitor or barrister) or a specialist in IP law.
General legal practitioners, such as solicitors and barristers, are automatically qualified to represent clients at EUIPO.
3.4 Professional Representation before the EUIPO
If you want to act in proceedings before the EUIPO in trade mark matters you must meet professional requirements. You must either have full legal qualifications (solicitors, lawyers or barristers automatically qualify) or you must be included on the EUIPO’s list of professional representatives. You must apply for certification from us if you wish to be on this list.
Who can we certify?
To obtain certification from us and apply to represent in trade mark matters before the EUIPO, you must meet one of the following criteria:
- you must be a qualified professional in IP law, such as a trade mark attorney; or
- have at least 5 years’ habitual exercise of representation before the IPO in trade mark matters.
Note that qualified trade mark attorneys are automatically entitled to also represent in design matters. Design and patent attorneys can only represent in design matters. Further information on representing in design matters before the EUIPO is available on our Protecting your design abroad guidance page (section 2.4).
How to apply
Please note that our offices are currently closed due to government advice on Covid-19. The way we process applications for professional representation is changing during this interim period.
We are currently able to process only electronic applications. Applications will also now be forwarded to the EUIPO in monthly ‘blocks’.
Please send us electronic copies of:
- the completed application form
- copies of your professional qualifications; or
- evidence of habitual practice (if you do not have professional qualifications). This will be either a reference from your employer, or evidence of the cases you have dealt with before a national IP office.
Please email these documents to email@example.com with the subject ‘Professional Representation before EUIPO’.
We will check that your application complies with EUIPO’s criteria and inform you if there are any problems.
We will notify you when we have certified your application. Certified applications will be added to a block certificate and sent to the EUIPO on a monthly basis. The EUIPO will then confirm with you that you are qualified to act before them.