International trade marks

The Madrid Protocol is controlled by the World Intellectual Property Organisation (WIPO). Their website provides a list of 97 member countries that an international application can cover. These include:

• China

• Iceland

• India

• Japan

• Kenya

An international application must be based on an existing trade mark application or registration in one of the member countries. If you apply through the UK office, your international application must be identical to your UK trade mark application or registration. You can file your international application at the same time as you make your UK application, or later if you wish.

You can only apply for a single mark, as the international system does not allow for a series of marks (as is the case in the UK).

European Trade marks

If you have made an application for a European trade mark (EUTM) at the European Intellectual Property Office (EUIPO), or have a registered EUTM, you can use that as the basis for an international trade mark, however, you must then make the application for that mark through EUIPO.

Note that from 1 January 2021, UK-based representatives lost their capacity to act before the EUIPO, with the exception of those  acting in ongoing procedures (ie trade mark proceedings that are pending before the EUIPO at the end of the Brexit transition period).

UK Trade marks

You can use your UK trade mark application to claim priority when applying for an international trade mark provided this is within 6 months. This means that your later application will be treated as if you applied on the same date as in the UK.

How much does it cost?

The cost to apply for an international trade mark depends on how many countries you want your trade mark to be protected in. Check the WIPO website for a list of fees and a fee calculator.

Payments must be made in Swiss francs (CHF) to WIPO in Geneva.

Who can apply?

• Only the holder (or the holder’s representative) of the UK trade mark may send an international application form.

• Anyone else must have a link with the case to be allowed to send a form.

What are the forms I need?

• Application Form MM2 can be downloaded from the WIPO website.

• You can also fill in the form online and then print it out.

Where should I send the forms?

• You should send your application form (together with Form FS4 and a handling fee of £40) to the Intellectual Property Office (IPO).

• The IPO will carry out certain checks upon receiving your application, including:

1. Whether your international application is for the same mark as the UK mark on which it is based.

2. The date on which your application was received - WIPO will use this date as the filing date of your international application.

When will I hear whether my application has been certified?

IPO will contact you within 10 working days of filing Form MM2. They will let you know whether your application has been certified, or whether any deficiencies were identified.

• Your application will be examined by WIPO and you will be notified of any irregularities.

• WIPO will forward your application to the national IP office of the country within which you are seeking to register.

What if my international trade mark is contested?

Your international application may be contested in one of two ways:

1. In the office of origin -

   • If your UK trade mark application changes; or

   • The international registration is dependent on your UK registration remaining in force. If your UK trade mark is contested in any way, the international application will be affected in the same way.

2. In the designated countries within which you are seeking to register -

1. • If your trade mark is opposed in any of the designated countries and that opposition is successful, this will only affect the international registration in that country.

You may wish to Ask a lawyer if your international application is opposed.