Trademark applications: European and International

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We are often approached by start-ups as well as established businesses seeking our advice on protection of their Trademarks, brands, wordmarks and logos in countries other than their home country.

In the digital age most, countries are accessible for business the most common question we are face with is “How can I get my trademark registered in multiple countries without having to leave my home country?”

Trademarks constitute one of the most important elements accorded protection under Intellectual Property Rights as it is a sign or a symbol that helps distinguish one’s goods or services from another player in the market.

In this article, we will be discussing the mechanism of getting your trademark registered in jurisdictions outside your home state-

EUROPEAN UNION TRADEMARK

  • An application for trademark protection before the European Union Intellectual Property Office (“EUIPO”) guarantees protection across jurisdictions that comprise the European Union.
  • Generally, the EUIPO does not set out any criteria in relation to the eligibility of the candidates. However, if the applicant does not have a place of business, a real and effective establishment or their domicile in the European Union, qualified legal professionals such as solicitors or barristers are to be appointed as representatives for the proceedings. Alternatively, the applicant can also choose to appoint as a professional representative to represent the applicant before the EUIPO.

INTERNATIONAL

  • International applications extend protection to a trademark across member countries that are signatories to the Madrid Protocol and have been listed as ‘member countries’ in their website. Madrid Protocol is commonly referred to as the World Intellectual Property Organisation (WIPO application).
  • The mark needs to be registered or applied for in the home country and the WIPO application mark should be identical to the mark in the home country. The WIPO application can also be filed on a later date.
  • The marks if registered remains registered for a period of 10 years from the date of its application.
  • The cost of applying for International Protection of your trademark is dependent on the number of jurisdictions you would like your mark to be protected in.
  • Countries at times may have bilateral agreements which allows reciprocal protection of trademarks.

BENEFITS OF INTERNATIONAL PROTECTION

  • Apart from providing protection to your trademark in multiple jurisdictions, European and International applications are less expensive than applications in singular jurisdictions.
  • Applications for protection in singular jurisdictions tend to be more cumbersome in terms of the paperwork and procedures involved.
  • The applications for European and International Protection also provide faster results.
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