Guidance

Protecting your trade mark abroad

Updated 18 November 2014

1. Introduction

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

2. 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 Community Trade Mark (CTM) through the Office for Harmonization in the Internal Market (OHIM), based in Alicante, Spain. You can also file your application through us, but we will charge you a £15 handling fee.

2.1 Cost

The trade mark application fee

€900 for up to 3 classes of goods and services €1050 if filed on a paper form. Each additional class is €150.

The collective mark application fee is:

€1800 for filing electronically or on a paper form.

You must fees must be paid in Euro directly to OHIM. If you file electronically, you can pay using a credit or debit card.

You can also pay by bank transfer.

You must pay the application fee within one month of filing your application. sending the application to us or to OHIM.

If you do not pay your fee within three months of the filing date, OHIM will treat your application as if you had never made it.

Your fee will not be refunded if you withdraw your application for any reason, or if it is refused by OHIM.

2.2 How to apply for a community trade mark

You can fill in an online application form on the OHIM 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 OHIM.

OHIM will contact you if any information is missing. You must send this within 2 months, otherwise your application will be dismissed.

2.3 Filing your community trade mark application through us

You can take or send your application (including form FS3 and the handling fee of £15) to us at:

Intellectual Property Office
Concept House
Cardiff Road
Newport
NP10 8QQ

or

Intellectual Property Office
1st Floor
4 Abbey Orchard Street
London
SW1P 2HT

Fax: 01633 814444

We will then send your application to OHIM on your behalf and give you a receipt. OHIM will issue the receipt if you file directly with them.

You must send any other documents straight to OHIM, as we can only file your application.

OHIM will then examine your application and will contact you or your representative if there are any problems with it.

2.4 Professional help with your application

Anyone can file a community trade mark application at OHIM, but all further steps of the examination procedure must be dealt with by a professional representative.

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 OHIM.

If you are a qualified professional in IP law, such as a trade mark or patent attorney and want to apply to OHIM to be included on their list of representatives, you can do so by sending:

  • a typed version of the application in relation to trade marks and a certification form or an application in relation to designs and a certification form A patent attorney may only represent in design matters
  • copies of your professional IP qualifications
  • evidence of habitual practice if you do not have professional qualifications, but have build up experience in representing trade marks and designs cases. This will be either a reference from your employer, or evidence of the cases you have dealt with before a national IP office

We will check that your application complies with OHIM’s criteria and inform you if there are any problems.

We will let you know when we have certified your application and have passed it to OHIM. They will then confirm with you that you are qualified to act before them.

Intellectual Property Office
Concept House
Cardiff Road
Newport
NP10 8QQ

You can find further information on OHIM’s website.

3. 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 CTM at OHIM, or have a registered CTM, you can use that as a basis for an international mark. However, you must then make the application for that mark through OHIM. The forms and fees are on OHIM’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.

3.1 Cost

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.

For any international application you will have to pay:

  • a basic fee of 653 Swiss francs for up to three classes of goods and services or 903 Swiss francs if the mark is in colour
  • an additional fee of 100 Swiss francs for each additional class of goods and services after the third or alternatively, an individual fee which is fixed by each country is required
  • a standard designation fee of 100 Swiss francs or alternatively, an individual fee which is fixed by the each country required
  • UK handling fee of £40 for us to process the application form

3.2 How to apply for an international trade mark

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 print the application form MM2 from the WIPO website, or you can fill in the form on-line and then print it out. WIPO will not accept handwritten applications.

You cannot file your application directly with WIPO, so you must send your application form (including form FS4 and the handling fee of £40) to the national trade mark office where the mark on which you are basing your international application is registered. So if you are basing your international application on a UK trade mark, you can take or send your application to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
NP10 8QQ

Intellectual Property Office
1st Floor
4 Abbey Orchard Street
London
SW1P 2HT

Fax 01633 817777

We will checkthat 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.

3.3 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

Your application will be examined by the national IP office of the countries you have designated. They will decide if your trade mark is acceptable for registration. An International application may be contested in two ways:

  1. If your UK trade mark changes
  2. 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.