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There are a number of different ways of obtaining foreign Trade Mark protection and we will recommend the best method for you at the appropriate time. A brief description of each of the possible routes is given below.
Whatever route is taken, if a foreign application is filed within six months of the filing date of your corresponding UK application, the foreign application can "claim priority" from the UK filing date, i.e. be deemed to have been filed as of the UK filing date. This can be advantageous in some circumstances, in order to secure an earlier effective foreign filing date.
You can secure protection for your Trade Mark in any selected country simply by applying to the relevant authorities in that country. Some countries subject each application to a rigorous examination procedure to determine if the mark is registrable whereas others do not examine applications other than for formalities.
Clearly, the costs of obtaining registrations will be more expensive for those countries where a full examination is carried out, particularly if the Examiner raises difficult objections. Almost all countries advertise the mark either before or after it is accepted, to allow third parties to oppose the application. In the absence of opposition, the mark will then proceed to registration.
This is the system that TPT recommends to most of its clients who require international protection. This scheme is based on a"home" (e.g. UK) Trade Mark Registration or Application.
The international application is filed, via the UK Patent Office, at the World Intellectual Property Organisation (WIPO). It can designate designating any country selected from the list.
Once filed, provided certain formalities have been met, the mark is registered on the International Register, then advertised and details of the mark as advertised are sent to the national office in each of the designated countries. There is then a period of 18 months in which objections can be made to the registration, either by the national office or as a result of opposition. A significant feature of this system is that it is possible to designate only one country initially, thereby keeping costs to a minimum, and to add other countries later.
The Community Trade Mark (CTM) is a single registration covering all of the EEC countries. Once filed, the CTM application is examined and, provided it is sufficiently distinctive, the mark is advertised. Provided there is no successful opposition by third parties, the mark is then registered and is effective in all the EU states.
A Trade Mark application will never be refused by the CTM office on grounds of existing Trade Mark registrations. However, a search through prior CTMs is conducted and the results sent to the Applicant. In addition, the owners of these prior CTMs are automatically notified of the advertisement of the mark, so that they can oppose it if they so wish, within three months of the date of advertisement. For this reason, CTM applications are quite often opposed.
The national offices in some countries (including the United Kingdom) will also make their own searches for any earlier national marks which could lead to an objection. If the mark is refused because of an objection in any of the EU states, the applicant has the option of converting the single application into separate national applications in the remaining states. Providing the mark is accepted by the office and not refused in any of the EU States, can it proceed to a Community Trade Mark Registration. The Registration may be entitled to the seniority (i.e. the date and all other rights) from any previous registration in any EU state, thus permitting the previous registration to be abandoned, without loss of rights.