FILING STRATEGY IN THE UK, EU AND WORLDWIDE

The filing strategy for your chosen trademark is dependent upon, inter alia, the geographic location that you intend to use your trademark in. Prior to filing a trademark it is important to consider your future business plans and territories in which your trademark will be used. Keep in mind that trademark rights are territorial.

FILING STRATEGY FOR THE UK

If your business operates solely in the UK it is likely that the most suitable and cost effective strategy is to file for a UK trade mark before the UK Intellectual Property Office (IPO). If the registration of your trademark is successful, you will be granted protection in the UK for 10 years. After which a renewal fee must be paid to ensure that protection of your trademark is continued. In a straightforward case the process of applying for a UK trademark application can take between 4 and 6 months.

FILING STRATEGY FOR THE EU

If your business operates in the EU it is likely that a cost effective route to protection would be to file a Community Trademark (CTM) Application. This is a single application process, which if successful will grant you protection in the 27 EU countries. If the registration is successful, you will be granted protection for 10 years. After which a renewal fee must be paid at ten yearly intervals. In a straight forward case the process of applying for a CTM Application can take between 6 and 8 months.

FURTHER FILING STRATEGIES

Should you require protection in countries outside the UK and the EU there are two further filing strategies to consider:

  • National trademark applications.
  • International (Madrid Protocol) registrations.

NATIONAL TRADEMARK APPLICATIONS

Should you wish to seek protection in individual countries; national trademark applications can be filed. The cost and process involved in filing national trademark applications differs between countries. However, the trademark attorneys at Albright IP have built up a network of carefully selected, trusted trade mark attorneys located in numerous countries worldwide that they work with to secure national registrations in a cost effective way.

INTERNATIONAL (MADRID PROTOCOL) REGISTRATIONS

The Madrid Protocol (MP) system is overseen by the World Intellectual Property Organisation (WIPO) and is an agreement containing over 80 countries. This system allows a single application to be made which designates some or all of the member countries. This MP system is usually less costly than filing individual national trademark applications. Furthermore, there is the potential to extend your protection to additional countries at a later date.

In order to file an MP application, the applicant must have either a UK or Community registration to act as a “base registration.” This “base registration” must be sustained for five years after the Madrid Protocol application has been filed. If it is revoked or deemed invalid within this five year period, the Madrid Protocol registration will also be lost, although it can be transformed into national trademark applications. This is known as “central attack” and reinforces the importance of a strong “base registration.” The trademark attorneys at Albright IP can offer advice as to how this can be best achieved.

 

WHY NOT CONTACT ALBRIGHT IP AND LET US HELP YOU?

The trade mark attorneys at Albright IP are experienced in advising you on the best filing strategy for your trademark, based on your intended business plans. Simply fill out the form on the left hand side of this page to obtain our professional, cost effective advice. Alternatively if you would like further information, please email us directly here or call +44 (0) 1242 691 801 to speak to a qualified British and European Trade Mark attorney.