European Community Trade Marks
European trade marks are the most comprehensive
protection you can obtain for your business name, brand
name, company logo or slogans, the protection is effective
throughout the whole of the European Community. Just
like the UK, once the European trade mark registration
has been granted it will last for 10 years and is renewable
in 10 year periods thereafter, the registration can
therefore last indefinitely as long as the registration
is renewed at the appropriate time.
Again, before the European trade mark
application is filed it is very important to ensure
that no existing identical or confusingly similar trade
marks exist which are either identical of confusingly
similar to your proposed trade mark. We therefore suggest
that we complete our clearance searches on the UK and
EC Trade Mark Registers prior to filing the application.
Although the European Registrar will search against
existing national European trade mark applications and
registrations before accepting the application for registration,
it is much more cost effective to search the UK & EC
Trade Mark Registers only then file the application
and wait and see the results of the examination report.
If we were to conduct 15 individual
trade mark searches on all 15 national European Trade
Mark Registers prior to filing the application these
searches would cost approximately £4000, which by far
outweighs the cost of filing the application.
The procedure for obtaining a European
trade mark registration is exactly the same as the UK,
however because of the amount of applications received
at the European Trade Marks Registry and due to the
delay with correspondence, it will take approximately
12 -18 months to obtain the registration.
An additional advantage of a European
trade mark is that the application can cover up to three
classes without incurring any additional fees.
As soon as the registration has been
granted we will conduct, free for the first year, a monthly
trade mark watching search to ensure that we are aware
of any new trade mark applications filed on either the
UK or EC Trade Mark Registers which are either identical
or confusingly similar to your existing trade mark registration.
After the initial first free year, our watching searches
are then renewable annually.
International Trade Marks
There is also an International trade
mark registration whereby one application can cover
any country party to the International system, the International
system is known professionally as the Madrid System
and the application can cover any country party to the
Madrid Protocol.
An International trade mark application
must be based on a 'home' registration and therefore
the trade mark must be filed on the UK Trade Marks Register or European Community Trade Marks Register
prior to filing the International application. The International
application is dependent on the 'home' application or
registration for the first 5 years and therefore it is important that the 'home'
registration is maintained until the 5-year period has
ended.
Please note that if your 'home' registration
is refused registration or is declared invalid or revoked
within the first 5 years of the filing date of the International
application, the International application will also
be cancelled.
Again, it is important that a trade
mark clearance search is completed in the countries
of interest prior to filing the International application,
however in some circumstances the search fees are more
expensive than the application fee and therefore in
these circumstances it is more cost effective to file
the application and wait and see whether an objection
is raised against it.
Just like UK and EC trade marks, International
trade mark registrations last for 10 years and are then
renewable in 10 year periods thereafter.
