GovWire

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 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.

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. Note that designations of the United Kingdom in international applications filed on or after January 1, 2021 will automatically be afforded protection in Gibraltar without any need for applicants to apply to register their trade mark in the territory.

If you have made an application for a European Union trade mark (EUTM ) at the European Union Intellectual Property Office (EUIPO), 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 EUIPOs 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.

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. 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.

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.

You can fill in the form on-line and email (including the form FS4 and the handling fee of 40) to internationaltrademarks@ipo.gov.uk.

Alternatively, you can send your application form (including form FS4 and the handling fee of 40) to:

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.

After you apply

1. You will receive a payment receipt within 5 days after sending us your MM2 application form
2. We will tell you if your MM2 application has been certified or if we have identified any deficiencies within 15 working days after you receive your payment receipt
3. If you have not received a certification or a deficiency letter 15 working days after receiving your payment receipt, contact 0300 300 2000
4. Your application will be examined by WIPO and you will be notified of any irregularities. WIPO will then 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

MM2 applications may be abandoned if deadlines are missed. No refunds will be given.

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.

For 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.

For further information regarding your case after it has been received at WIPO and to monitor its current status, information can be found using Madrid Monitor.

Additionally if you have a WIPO account you can request alerts through the Madrid Electronic Alert system or request e-mail notifications using the Electronic Notification Service.

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:

1. If your UK trade mark application 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 WIPOs 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 persons costs.

Any costs incurred are set according to the law of the National Offices in the designated countries.

You may wish to seek p

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