Trademark protection on a global scale


Financier Worldwide Magazine

January 2016 Issue

January 2016 Issue

Why should I register my trademark? This is a question that the majority of business owners, from the sole trader, to the start-up to the multinationals, ask when the discussion about trademark protection arises.

One simple answer is prevention is better than a cure. Businesses should think about trademark protection in the same way they do about insurance for their business and property – your trademark is recognised property after all.

Trademarks may take the form of plain words, logos, names, devices, etc. For trademark purposes, goods and services that can be supplied commercially are categorised into 45 classes. For example, clothing will fall under class 25.

Trademark registration provides monopoly protection (i.e., exclusivity) in the territory it is registered. This means exclusive rights to use the trademark for the goods or services for which trademark protection is claimed. Furthermore, it allows the opportunity to prevent others from using the same or similar trademark for the same or similar goods or services.

A trademark is an asset that has value, and so protecting it should remain an important factor in any business strategy, in particular in the company’s home country. A trademark serves as an indicator of origin to customers, is in sync with reputation and is the attractive force that brings in customers continually, especially in our fast paced social media world.

A trademark can be bought, licensed, franchised or even used as security, another reason why it is important to ensure adequate protection in the countries of interest for the business, irrespective of the size of the company or other important issues to address such as funding for the business.

Due to the ‘Dragons Den’ effect, most investors will now only meet with potential investees and consider investing if the potential investees have already sought protection for their trademark in the home country at the very least.

Trademarks by nature are territorial, and this means protection is achieved and enforceable on a country by country basis. For example, a UK trademark registration will provide exclusive enforceable rights in the UK, while a US trademark registration will provide exclusive enforceable rights in the US – and this is not interchangeable. There are certain exceptions to this rule, however, such as the Community Trademark (CTM) which is a trademark registration which covers the 28 EU member states. A registered CTM will give a company exclusive enforceable rights in all the individual EU member states.

Then there is the international system. A common question asked by businesses is: “How can I register my mark globally?” While there is no system in place that allows global trademark registration in all countries, there is the Madrid System for the registration of international trademarks, which is the next best thing.

The Madrid System is administered by the World Intellectual Property Organisation (WIPO) based in Geneva and provides trademark owners with a cost effective way of protecting their trademark in around 96 countries by filing a single application, in a single language, with a single set of fees. The usefulness and effectiveness of the system is supported by the number of countries signatory to it, such as the UK, the US, Japan, Germany, France and Russia, for example. More countries including Canada, South Africa and Dominican Republic plan to join in the foreseeable future.

A Madrid registration is equivalent to an application or registration of the same trademark made in any of the countries selected by the trademark owner in the application, and is subject to the same laws as if the trademark was filed directly with a national trademark office, but in most cases the trademark registration process is achieved more quickly.

Once registered, the international registration can be maintained and renewed through a single procedure, making the subsequent management of that trademark portfolio much easier and more cost effective. A company will also be able to subsequently designate additional countries to the Madrid registration as and when they join the Madrid System.

With the Madrid System there is no requirement to involve local lawyers or incur local lawyer fees, unless objections are raised in a particular country and at that stage there is a need to engage a local lawyer to assume responsibility and deal with the local trademark office directly – hence the significant cost savings when using this system.

The application under the Madrid System must be based on a national trademark application or registration, so a UK business will first apply for, or achieve, a UK or CTM registration, and this trademark will serve as the basis for using the Madrid System and adding the countries of interest in the application, creating a bundle of trademarks under the Madrid System umbrella.

So many businesses do not register their trademarks at the outset, but invest a significant amount of money promoting the brand and then another party registers the trademark or starts using the same or similar trademark. What happens next is that thousands of pounds are spent trying to recover the trademark and prevent the unauthorised use.

If a company registers its trademark, it is much easier to take legal action against others using the trademark without permission, as registration gives concrete proof of legally protected rights. Therefore, it is vitally important to ensure the right trademark protection in the countries where the company already trades and those countries it plans to expand into in the foreseeable future. This will ensure the tools are in place to prevent counterfeits and infringers from damaging the reputation afforded to the brand and business.


Ese Akpogheneta is an attorney at Nucleus IP Limited. She can be contacted on +44 (0)203 102 9022 or by email:

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