Earlier, we looked at international trade mark filing strategies in the United States of America, China and New Zealand. Below, we continue to unpack the advantages and disadvantages of each approach, this time turning our attention to Europe, Hong Kong and Canada.

The UK, France, Italy, Spain, Germany

There are three filing strategies available for the United Kingdom, France, Italy, Spain and Germany. You can file a trade mark application directly through their respective trade mark offices.  

These countries are also signatory to the Madrid Agreement and/or Protocol. As such, if your international registration is successful, your trade mark receives the same protection as a national registration in that country. 

The third option is to apply for a European Community trade mark administered by the Office for Harmonisation in the Internal Mark (OHIM). The Madrid System also covers the European Community Trade Mark, which means that you can designate to have protection under the European Community Trade Mark by filing an international application through Madrid.

Hong Kong

There is only one filing strategy available for Hong Kong, and that is to apply directly to Hong Kong’s Intellectual Property Department. China resumed exercising sovereignty over Hong Kong from 1 July 1997. However, the People’s Republic of China deferred requests for the territorial extension of the international registration of marks to the Hong Kong Special Administrative Region. 

Canada

Although Canada has indicated its interest in joining the Madrid Protocol, it is yet to sign as a member state. For this reason, the only filing strategy available for Canada is to file directly through its trade marks office.

European Community Trade Mark

Filing through OHIM is potentially more cost effective for the following reasons:

  • You can apply to all member states in one application
  • You only need to pay for one filing fee as compared to paying for filing fees for each country

The biggest risk, however, is that it is unitary in nature. So, if there is an issue with the trade mark in one member state, then the whole application fails.

What are the Advantages of the International Registration System?

  • You only need to file one application for multiple countries;
  • You can add additional countries through a subsequent designation at a later date;
  • The application only needs to be filed in English;
  • The application can be filed in one office;
  • It is more cost effective as you can make payments in one currency; 
  • Managing your trade mark portfolio becomes easier because of only one filing date, and you can make changes or renew your trade mark through one organisation (the WIPO); and
  • Under the Madrid system, a US registration will be issued without the need to file a Statement of Use.

What are the Disadvantages of International Registration System?

  • Application and registration fees are paid upfront;
  • The international application and the designations are reliant on the basic trade mark within the 5 year dependency period; 
  • If objections are raised overseas, then the applicant needs to appoint local representation;
  • Trade mark representation cannot be amended once registered; and 
  • International trade mark registrations are vulnerable to central attack. This means that if the basic trade mark application fails, then all the other designations fail.

Key Takeaways

If you are confident that your trade mark would satisfy the requirements for registration in the countries you are interested, and if time is not a deciding factor, the simplest way to apply for a trade mark is to use the Madrid system. 

However, if you anticipate objections and problems arising from other countries, it may be best to directly apply to each countries’ trade mark office. If you are unsure, it is best to speak with a trade marks lawyer who can determine the strategy that best suits your business and legal needs.

Questions? Get in touch on 1300 544 755. 

Raya Barcelon

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