Across the Pond: The territorial nature of trade marks, and taking your brand abroad

One of the most important things to consider if you intend to carry out business internationally is whether you are able to export your brand.  Developing brand equity can be arduous and expensive, an investment that might be wasted in cases where you cannot operate under your brand abroad.

Territorial nature of Trade Marks

Trade mark registration provides you with a monopoly over the use of your brand names and images in connection with the products and services you offer.  This helps to prevent consumer confusion between your offerings and those of competitors, and gives you the opportunity to nurture a relationship between your customers and your brand.  However, trade marks are territorial.  This means that they only provide protection in the countries in which they are registered.  For example a UK registration will protect your mark within the UK, and a registration through the USPTO will prevent competitors from using it in the United States. 

Community Trade Marks and the Madrid System

While trade marks are territorial, there are two systems that facilitate the process of extending your mark across a variety of different countries.  In order to register your mark throughout Europe, rather than registering in each member state individually, you can apply for a Community Trade Mark (CTM).  A CTM protects your mark in all 27 European states, however, if your mark fails to meet the requirements of a single member state, then protection is not granted in any of the others.

To extend your name protection to jurisdictions outside of Europe, you will have to make separate applications.  For this purpose your UK or EU application may form the basis for an application for trade marks in other countries which are members of an international system known as the Madrid system, through the World Intellectual Property Organisation (WIPO) in Geneva (see WIPO website for list of countries).  At the time of writing not all countries are parties to the protocol - for example Canada and South Africa are not parties - and so to protect your mark in those jurisdictions it will be necessary to file individual applications for each.

Under the Madrid system, you make a single application, and name the countries in which you wish to obtain trade protection, and make the appropriate payments for those countries, which then have 18 months in which to raise any objections to your application.  The basic fee for the application is in Swiss Francs and additional fees are payable depending on the number of countries in which you seek to register your mark;  if you later decide to expand to further countries it is possible to add them as and when required.

The Madrid system offers a number of advantages, in terms of cost, administration, and flexibility.  For example, Once you file an application under the Madrid system, if objections are raised on it in some countries that you are unable to overcome, your mark will not be accepted in those countries.  However, unlike the CTM, your application will continue to be acceptable in other countries unless there are valid objections in any of those countries.

International Trade Mark Registration

The important points to remember are that while your brand name might be available in the UK, if you intend to carry out business abroad you should check the trade mark registers of the different countries in which you wish to operate before investing in marketing.  Once you have determined its availability, the most cost effective way of protecting your brand internationally is through the Madrid Protocol, or with a CTM if you only require protection throughout the EU.