| One of the most important things to consider if | | | | Intellectual Property Organisation (WIPO) in |
| you intend to carry out business internationally is | | | | Geneva (see WIPO website for list of countries). |
| whether you are able to export your brand. | | | | At the time of writing not all countries are parties |
| Developing brand equity can be arduous and | | | | to the protocol - for example Canada and South |
| expensive, an investment that might be wasted in | | | | Africa are not parties - and so to protect your |
| cases where you cannot operate under your | | | | mark in those jurisdictions it will be necessary to |
| brand abroad. | | | | file individual applications for each. |
| Territorial nature of Trade Marks | | | | Under the Madrid system, you make a single |
| Trade mark registration provides you with a | | | | application, and name the countries in which you |
| monopoly over the use of your brand names and | | | | wish to obtain trade protection, and make the |
| images in connection with the products and | | | | appropriate payments for those countries, which |
| services you offer. This helps to prevent | | | | then have 18 months in which to raise any |
| consumer confusion between your offerings and | | | | objections to your application. The basic fee for |
| those of competitors, and gives you the | | | | the application is in Swiss Francs and additional |
| opportunity to nurture a relationship between | | | | fees are payable depending on the number of |
| your customers and your brand. However, trade | | | | countries in which you seek to register your |
| marks are territorial. This means that they only | | | | mark; if you later decide to expand to further |
| provide protection in the countries in which they | | | | countries it is possible to add them as and when |
| are registered. For example a UK registration will | | | | required. |
| protect your mark within the UK, and a | | | | The Madrid system offers a number of |
| registration through the USPTO will prevent | | | | advantages, in terms of cost, administration, and |
| competitors from using it in the United States. | | | | flexibility. For example, Once you file an |
| Community Trade Marks and the Madrid System | | | | application under the Madrid system, if objections |
| While trade marks are territorial, there are two | | | | are raised on it in some countries that you are |
| systems that facilitate the process of extending | | | | unable to overcome, your mark will not be |
| your mark across a variety of different | | | | accepted in those countries. However, unlike the |
| countries. In order to register your mark | | | | CTM, your application will continue to be |
| throughout Europe, rather than registering in each | | | | acceptable in other countries unless there are valid |
| member state individually, you can apply for a | | | | objections in any of those countries. |
| Community Trade Mark (CTM). A CTM protects | | | | International Trade Mark Registration |
| your mark in all 27 European states, however, if | | | | The important points to remember are that while |
| your mark fails to meet the requirements of a | | | | your brand name might be available in the UK, if |
| single member state, then protection is not | | | | you intend to carry out business abroad you |
| granted in any of the others. | | | | should check the trade mark registers of the |
| To extend your name protection to jurisdictions | | | | different countries in which you wish to operate |
| outside of Europe, you will have to make | | | | before investing in marketing. Once you have |
| separate applications. For this purpose your UK | | | | determined its availability, the most cost effective |
| or EU application may form the basis for an | | | | way of protecting your brand internationally is |
| application for trade marks in other countries | | | | through the Madrid Protocol, or with a CTM if you |
| which are members of an international system | | | | only require protection throughout the EU. |
| known as the Madrid system, through the World | | | | |