Once you’ve locked down your trade mark in Australia, the next step is extending your protection to relevant international markets like Europe and the UK. While there is no one-size-fits-all when it comes to international trade mark filing strategies, here are some pointers for European and UK trade mark protection.

Timing matters: when to file your trade mark internationally to secure priority

You can file your European and UK trade mark applications up to six months after filing your equivalent Australian trade mark application, and claim the Australian filing date.

What does this mean in practice? Once trade marks are registered, the owner’s rights extend back to the date they filed their trade mark application. This means securing a filing date for your trade mark is key, as is getting ahead of other applicants seeking to protect the same or a similar trade mark to yours.

If you file a European or UK trade mark application within six months of your Australian filing date and claim priority, your application will take precedence over any later filings for the same or a similar trade mark. This can be advantageous from both a market perspective but also during the examination phase of your trade mark application.

Relying on the priority period gives you additional time to assess European and UK market viability for your goods and/or services before filing trade mark applications in those markets and also allows you to stagger costs, which is helpful when budgets are tight.

European trade mark registration considerations

There are currently 27 countries in the European Union, and while it is possible to seek separate trade mark registrations in each country (and there may be strategic reasons why you would seek national trade mark registrations), the most efficient and cost effective option is to file an EU trade mark (EUTM), which encompasses all 27 countries.

The beauty of an EUTM is that you have one trade mark application to prosecute and renew – not 27. This is much simpler from an administrative perspective and saves considerable costs.

Any individual or company can own a EUTM – there is no requirement that the individual or company be based in or established in Europe. However, it is necessary to appoint a local associate to represent you before the European Union Intellectual Property Office (EUIPO). Source can assist with this process, and liaises with trusted local associates when filing EUTM trade marks.

UK trade mark registration and the effect of Brexit

Brexit had a considerable impact on the trade mark world. Since 1 January 2021, EUTM’s are no longer protected trade marks in the UK, so if you wish to register a UK trade mark, you will need to file a separate UK application.

Any individual or company can own a UK trade mark, but it is necessary to appoint a local associate to represent you before the UKIPO. Source liaises with trusted UK associates to assist with this work.

Methods of seeking European and UK trade mark applications

EUTMs and UK trade mark applications can be filed directly with the EUIPO and UKIPO respectively, or designated in a Madrid Protocol application.

You might file directly with the EUIPO and/or UKIPO if you are only extending your trade mark protection to these markets. It is typically more cost effective (and sometimes faster) to file directly.

It is also possible to designate the European Union and the UK in a Madrid Protocol application. The Madrid Protocol is a centralised system for filing, prosecuting and renewing international trade marks. The applicant files a single application nominating the jurisdictions for which protection is sought. The application is then examined by each national trade mark office.

The Madrid system has many advantages including centralised communications through the World Intellectual Property Office (WIPO), the ability to seek protection in multiple countries through a single filing, and importantly cost-effectiveness. Depending on the countries of interest, when seeking trade mark protection in three or more jurisdictions, the Madrid Protocol is generally more cost effective than direct filing. You can calculate fees for Madrid Protocol applications using Source’s Madrid Protocol calculator.

The importance of international brand protection

Your brand is one of your most valuable business assets, and it’s worth putting the right measures in place to protect it around the world.

At Source, we offer comprehensive trade mark services at an affordable, fixed annual fee. We can provide tailored cost estimates for direct filings and Madrid Protocol applications. Talk to our Source IP experts today to ensure your brand has the protection it needs for the long run.