Registering Your Mark In Europe? Consider These Three Alternatives

If you are selling your trademarked goods or services in Europe, you may want to register your mark there. Your US trademark rights stop at our borders. But news of good brands travels fast. You don’t want to find when you expand to Europe that another has registered your trademark ahead of you in anticipation of reaping a profit from your purchase of it.

Although many European countries, including the United Kingdom and Denmark, do not require registration for protection, registration will give you some advantages. It will prevent others from registering your mark or a similar mark. Further, enforcing an unregistered trademark in Europe is more difficult and expensive.

Your three best alternatives for mark protection in Europe are: a national registration in the countries where you contemplate selling your goods; an international trademark via the Madrid Protocol; or a Community Trade Mark (CTM).

I first discuss the nuts and bolts of each alternative and then list the advantages and disadvantages of each.

National Registration

A national registration in most of the 27 member countries that comprise the European Union (EU) is usually quick and inexpensive. Absent opposition to your registration, it should issue in less than a year and your filing and legal fees may be less than $1,000 for each national registration.

Madrid Protocol

The Madrid Protocol is an international treaty that allows you to register your mark in any of the 88 countries that are signatories to the Protocol. A list of countries, which includes the US and all 27 members of the EU (except Malta), is at http://bit.ly/fxEl9d.

Any person or entity domiciled or doing business in the US is eligible to file an application (called an “international application”) via the Madrid Protocol with the US Patent and Trademark Office (PTO). Its electronic forms are at http://teasi.uspto.gov/. In the application you designate the EU countries where you seek to protect your mark.  You must base the application on an already issued registered mark in the US or a pending US registration application.

The Three-Step Process

The application triggers a three-step process. The PTO first reviews the application to ensure that the information in the international application (such as the designation of classes and the description of goods or services) matches the information in the US registration or application. If it does, and you have paid the $100 fee per class to the PTO, it will quickly certify the application and pass it along to the World Intellectual Property Organization (“WIPO”) in Geneva, Switzerland.

You may also pay the PTO the fees due WIPO and the additional fees charged by the countries in which protection is sought. The PTO calculates them by using the WIPO fee calculator at http://www.wipo.int/madrid/en/fees/calculator.jsp.

WIPO

WIPO’s receipt of the application triggers the second step of the process. If WIPO determines the application meets the Madrid Protocol filing requirements, it will in approximately thirty days register the mark, issue a certificate of international registration, publish it in the WIPO Gazette of International Marks and notify each country named in your international registration of the request for extension of protection to that country.

The Country By Country Examination

In the third and final step of the process, each country examines the international registration to determine whether it complies with its rules and laws, applying the same standards as if it were examining a national application. Each country must decide within eighteen months whether to accept or reject the request for extension of protection. If the country accepts the request, it issues what’s called a statement of grant of protection. If a country takes no action within that eighteen-month period, the request for extension is automatically granted. If one country refuses registration, you can still register the mark in the remaining designated countries.

You must then use the mark in each country in which it is registered. Your international registration is valid for 10 years. But if the US registration or application is cancelled or abandoned within the first five years after you have received the international registration, it and all the member countries grants of protection fail. You can then transform the cancelled international registration into national applications by filing the application within three months of the cancellation.

The CTM Application

The third alternative for protection in the EU is the Community Trade Mark (CTM). A CTM application is a single application and when issued is effective in all 27 member states of the EU. It is an “all or nothing” system. You cannot pick and choose among the EU member states in which you want to register. The mark must be registrable throughout the EU; if there is a basis for rejection in one EU state, the CTM registration is void everywhere.

To obtain a CTM registration, the applicant need not own a U.S. or other country registered mark or an EU business.

The Office for the Harmonization of Internal Markets located in Spain examines the application. If all goes well, the registration will issue in about 26 weeks (see http://bit.ly/JgQHkI) and will cost about $1,200.

If the CTM is successfully challenged by a third party or a country, the applicant may convert the CTM application to a national application in each of the EU countries in which it wishes to continue to pursue registration. If the CTM application matures to registration, it is valid for 10 years from the filing date, but is vulnerable to attack if it is not used for any period of five years from the date of registration. Use in one country is sufficient to maintain the CTM mark in all EU countries.

The CTM registration creates a single supernational right that is enforceable throughout the EU by a legal proceeding in any one member state. Because the CTM gives you a unitary right, you only have to pay one fee to renew.

Advantages and Disadvantages

So which of these alternatives should you choose? Here are some brief guidelines.

The fastest and least expensive is the national application. This may be your best alternative if you are targeting only one or two EU countries. But national applications become far less cost effective if you seek protection in more than a handful of countries. Further, the rights you receive from a national registration are only enforceable in the country that issued the registration. So if infringers in two countries separately infringe, you may have to bring two proceedings in two countries.

If you seek protection in more than three EU countries, but not throughout the EU, the Madrid Protocol is your best bet. A Madrid application allows you to file for protection in multiple jurisdictions by one application in one language; and you have the option of paying all fees in a single amount at one time in one currency. Further, the application will cost less than multiple national applications; and you will know within 18 months the countries were your mark will be protected. A Madrid registration also provides for a lower maintenance fee than a series of national registration. That’s because you pay WIPO a single renewal fee after the international registration expires in 10 years.

But the Madrid Protocol can become costly if there is opposition in the countries in which extension of protection is sought. At that point you will need to retain counsel in those jurisdictions which will wipe out any cost advantages. Further the mark must be used and enforced in each country separately. And the scope of protection for your mark abroad is limited to your description of goods or services in your US registration.

The CTM gives you protection in the most countries for the smallest fee and use in one country is sufficient to maintain the mark in all countries. Further if the defendant is infringing the mark in multiple countries in the EU, the mark holder can obtain an EU-wide injunction in a single action anywhere in the EU. But there may be a high risk of failure because rejection by one of country voids the entire application in all 27 EU countries.

So assess these pros and cons before going forward. Do you have European registration stories to share? Please include them in your comments below.

Share/Save

5 Responses to “Registering Your Mark In Europe? Consider These Three Alternatives”

  1. Neat summary Andrew.

    From a costs point of view, it is usually more efficient to file a CTM if protection is sought in more than one country.

    In terms of time, a CTM can also be designated in a Madrid application but this is much slower to grant (20 months) than a CTM filed directly (4 to 6 months).

  2. Andrew Berger says:

    Good point Robert: a mark holder filing a Madrid application has the option of not simply designating some of the EU countries. Instead the mark holder can designate them all via a CTM. You are correct that this may slow the process down but, if the application is successful, the mark holder will have considerable protection. Of course the mark holder need not restrict protection to Europe. It can in the same Madrid application seek protection in other parts of the world where its products will be marketed.

  3. Robert Cummming says:

    It’s also worth bearing in mind that a CTM (or international designation of the EU) covers only those members states of the European Union and not the remaining 23 countries of “Europe”. Notable exceptions are Switzerland, Norway and Russia. Protection in each of the additional countries must be sought separately.

  4. […] Also for my earlier post explaining the basics of a CTM or a Madrid Protocol application click here. […]

  5. […] post-INTA post explaining the changes wrought by the IP Translator case click here.   Click also here for a post comparing a filing under the Madrid Protocol with a […]

Post a Comment. They will appear on the site when approved.

*

SUBSCRIBE TO THE BLOG