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When expanding your business to international markets, you should ensure that the effort you have invested in protecting your intellectual property (IP) at home is not wasted. Implementing a European brand protection strategy is the best way to ensure that other businesses cannot exploit your brand to promote their competing goods and services. In this article, we discuss how you can legally protect your brand in Europe and the advantages and disadvantages of each option.

International Trade Mark Registration

The first step in your European brand protection strategy is to register your trade marks across Europe. You can make:

  • an application through the Madrid Protocol system;
  • a series of individual applications directly to each country’s local trade mark office; or
  • an application for a European Union Trade Mark (EUTM).

1. The Madrid Protocol

The Madrid Protocol is an international treaty that lets you submit a single application for any number of member countries.

You will need to have an existing trade mark in your home country to apply. This is because your Madrid application will mirror your existing trade mark. Typically the ‘home mark’ will be an Australian trade mark. However, it can also be an existing mark in any Madrid member country.

You should file your application through the World Intellectual Property Office (WIPO). WIPO first examines the application before filtering it down to each applicable country’s trade mark office to go through their national process.

There are advantages and disadvantages of opting for a Madrid application over direct applications:

Advantages

Disadvantages

Typically cheaper than direct applications where multiple countries are involved. Not every country is a party to the Madrid Protocol.
You can add extra countries to an existing Madrid application later on, rather than starting over. Due to the additional examination step, the process to register takes longer.
Each country’s mark will have the same priority date. You may still need to make changes or file additional evidence or documents for separate countries at the national level.
There is a single application for multiple countries. The application must be an exact match to a pre-existing mark, including classes, class description, claims, and details of the owner and address for service.

 

2. Direct Applications

Direct applications can require extra procedural steps that differ from an Australian application. However, there are several advantages in applying this way, including:

  • the ability to tailor your application to each country’s process;
  • a potentially quicker registration system than the Madrid Protocol; and
  • the support of local experts.

If you apply directly to a trade mark office, it is a good idea to engage a local associate to help guide you through the quirks of each country’s laws and processes. 

Tip: Often businesses will adopt a mix of both Madrid and direct applications to protect their brand in European countries. However, how you approach this can depend on:

  • important markets for the business;
  • specific country processes; and
  • whether there are similar businesses and marks in any specific country.

 

3. EUTM

If you want to protect your brand in Europe, you can apply for a EUTM. Applications must be filed with the European Union Intellectual Property Office (EUIPO), Europe’s central IP office.

Applying for a EUTM can make it quicker, easier, and more cost-effective to protect your brand in Europe. You can apply for protection across all European Union (EU) member states in a single application. This is in contrast with the Madrid Protocol, where you must nominate and pay for each country in which you want protection.

However, the EUTM application process does have a few drawbacks:

  • since the EUTM is across all member states, your application could be rejected if there is a similar mark in even one country’s national trade mark office;
  • a EUTM does not consider translations of a word. So, if you are thinking about translating your business or product name into a different language, the translation would not be protected; and
  • a EUTM only protects your brand in European countries that are EU member states. As a result, it does not give you trade mark protection in non-member states such as:
    • Switzerland;
    • Norway;
    • Russia;
    • Turkey; and
    • many other Eastern European countries.

Brexit’s Effect on EUTMs

It is still unclear whether EUTMs apply to, and are enforceable in, the United Kingdom (UK) post-Brexit. As with most of Brexit, there is no formal procedure for what happens to a EUTM if a member state leaves the EU. 

The current draft treaty allows EUTMs that are registered before 31 December 2020 to be duplicated in the UK. Therefore, if you register a EUTM before this date, you will be granted a UK trade mark for the same mark with the same description of goods and services. This mark will have all the same priority and renewal dates as the corresponding EUTM. These corresponding UK trade marks are a completely separate mark from your EUTM. This means that you will have two separate trade marks.

Therefore, if you want to protect your brand in the UK as well as other European countries, apply for:

  • a EUTM; and
  • a UK trade mark (to ensure you still have brand protection in the UK).

Note: The UK is currently still an EU member state and, therefore, EUTMs have UK protection for the time being.

Key Takeaways

If you want to protect your brand in Europe, apply for trade mark protection through:

  • the Madrid Protocol;
  • directly to each country’s IP office; or
  • by obtaining a EUTM.  

However, the option (or option) you choose will depend on what you want from your business and where you want to focus your expansion efforts. If you want help to protect your brand in Europe, get in touch with LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

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