How To Register Your Trade Mark Overseas

When it comes to protecting your brand, registering a trade mark is essential. However, many clients often wonder how they can obtain a trade mark worldwide. It is important to understand that trade marks are territorial, meaning that each country requires a separate registration, and as such, obtaining protection for your brand in every country worldwide is neither necessary nor financially feasible. In this article, we will explore the process of registering trade marks overseas and how we can assist in protecting your brand globally.

Should I register my trade marks overseas?

If you are considering whether to register a trade mark overseas, it is important to take into account where your business currently operates and where you plan to expand in the near future. Registering your trade mark in the countries where you sell your goods or provide services, as well as in countries where you plan to do so, can help protect your brand and avoid issues with potential infringers.

It is also important to consider where and how your business operates. If you manufacture goods in one country but sell them in another, you should consider obtaining protection in both countries. Similarly, if you conduct business online and ship your goods worldwide, it may be beneficial to focus on registering your trade mark in countries with high sales volume or where the risk of counterfeiting and trade mark squatting is greater.

Overall, determining where to register your trade mark overseas requires careful consideration of your business operations and potential risks. Seeking the advice of legal professionals can help you make informed decisions about protecting your brand.

How can I register my trade marks overseas?

Registering a trade mark overseas can be a complex and challenging process. The first step is to conduct a trade mark search in each country where you plan to register your trade mark. This will help you determine the availability of the mark and avoid any potential conflicts with existing trade marks.

Once you have identified the countries where you wish to register, there are generally two ways to go about trade mark applications. The first method is by making a single application to the World Intellectual Property Organisation (WIPO) and designating countries where you wish to obtain trade mark protection. WIPO will examine your application for compliance with formalities and, once approved, will forward it to each of the designated territories for further examination. This method is cost-effective as it works out cheaper than filing direct applications in each jurisdiction. However, it has its own limitations and not all countries take part in this system.

The second method is to make trade mark applications in each country directly by hiring local legal counsel. This method gives you more flexibility and control over your trade mark application, as your counsel will advise you every step of the examination process and will help you deal with any issues that may arise.

It is important to note that not every country has signed up for the WIPO system, so if you need protection in a country that is not part of the system, that will require an individual application in that country via local agents.

In summary, each method has its advantages and disadvantages, and it is important to seek professional advice in order to determine which method will work best for your particular circumstances.

What’s the cost of registering a trade mark overseas?

The cost of registering a trade mark overseas can vary depending on a number of factors. Some of the key considerations include the number of countries in which you wish to register your mark, the scope of protection you are seeking, and any legal challenges or oppositions that may arise during the registration process. To get a better sense of the costs involved in registering your trade mark abroad, we recommend speaking with one of our legal professionals, who can guide you through the process and provide an estimate based on your specific circumstances.

Risks and issues with distributors

Working with overseas distributors can be a valuable way to expand your business, but it also poses potential risks to your trade marks.

One common challenge is the possibility that the distributor may register your trade mark under their own name, giving them ownership and control over your brand in that market. While most distributors are accommodating in transferring the registrations to the rightful owner, the cost of such a transfer can be substantial. The main issue is where the distributor files an application that goes unnoticed until a dispute arises or the business relationship is terminated. In such situations, a distributor can blackmail the supplier by threatening to block the import and sale of their goods.

To avoid these risks, we recommend that clients working with overseas distributors take steps to protect their trade marks with proper registration and drafting of distribution agreements that cover trade mark and intellectual property issues. With the right legal guidance and protections in place, you can confidently expand your business abroad and protect your intellectual property along the way.

UKIPO travel guides

The UK Intellectual Property Office has published a set of guides that provide valuable insights for businesses seeking to expand their intellectual property rights overseas. These guides offer expert guidance for safeguarding and exploiting intellectual property rights, including copyrights, trade marks, designs, and patents, in countries such as Turkey, Brazil, China, India, South Korea, South Africa, the USA, and Vietnam.

For UK and EU businesses looking to export their products, these countries may prove to be suitable markets. Manufacturing products locally in these jurisdictions may also be more cost-effective, or there may be greater demand for your products in those regions. As such, licensing your intellectual property rights to local manufacturers or distributors can be a viable option for enhancing your business operations. However, it is essential to seek professional advice when expanding your intellectual property rights in these countries.

Nevertheless, business owners who are well-informed about intellectual property rights and the common issues that arise when operating in these markets and have established the necessary safeguards beforehand can make the process more efficient and streamlined. To benefit from these guides and learn more about intellectual property rights abroad, please refer to the official collection of UK Intellectual Property Office guides.

Key takeaways

So, to sum up:

• Registering a trade mark is essential for protecting a brand, and it is important to consider registering it in countries where the business currently operates or plans to expand.
• Trade marks are territorial. Therefore, every country requires a separate registration.
• There are two ways to register a trade mark overseas – through a single application to WIPO or by making trade mark applications in each country directly.
• The cost of registering a trade mark overseas varies depending on a number of factors like the number of countries, scope of protection, and any legal challenges.
• Working with overseas distributors poses potential risks to trade marks, like distributors registering the trade mark under their own name. Proper registration and drafting of distribution agreements can help protect your intellectual property.
• The UKIPO has published a set of guides that provide valuable insights for businesses seeking to expand their intellectual property rights overseas, which can provide guidance on safeguarding and exploiting intellectual property rights in different countries.

As experts in all aspects of intellectual property law, we can help you register your trade mark overseas. We work with a reliable network of legal experts across the world, providing legal guidance for international trade mark applications both through the WIPO system and via direct filings. If you would like to discuss the protection of your brand, please fill out the contact form below, and we will be in touch to arrange a free consultation with one of our specialist lawyers.

Article last updated: May 2023