Extending Trademark Protection Overseas

Related Practice Area: Technology & IP Transactions
Tags: Trademark, EUIPO, WIPO

One of the by-products of an increasingly-globalised world is the rapid increase in cross-border trade. A phenomenon which was hitherto limited to a handful of multinationals, has become standard practice today for a multitude of businesses, including SMEs. 

One consideration which could be significantly more taxing on smaller businesses when operating cross-border, is the protection of their brand identity. Obtaining the required trademark protection in each country of operation is imperative for companies operating cross-border, to pre-empt any potential abuse by anyone who could take undue advantage of their intellectual property or reputation. But what options are available to businesses wishing to extend their trademark protection to other jurisdictions overseas? 

1.    Separate National Registrations

Trademark protection is traditionally territorial, confined to national borders. Normally enterprises must take out a separate trademark application in each country where they desire protection. Should one be interested in registering a trademark in a limited number of jurisdictions, the best option would probably be to take out separate registrations in each state, thereby keeping costs to a minimum. 

However, the drawback of this route is that it may involve dealing with numerous authorities in different states. One must additionally manage, renew and keep up-to-date with each independent registration separately.  

2.    International Registration

While there is no possibility to register a trademark which applies globally, the “Madrid System” of international registration, which has been in place since 1891, facilitates registration of trademarks across various states across the globe. 

Essentially it is a convenient way to access numerous regions across the globe through a centralised trademark registration system. One may register trademarks in 116 countries through a centrally-administered application via the International Bureau of WIPO. Notably, an international registration must be based on a prior national or community trademark (the “trademark of origin”) and applications are processed through the trademark of origin’s IP office, whose role it is to certify applications. Therefore, in this sense, prior national registration in at least one state is a prerequisite for commencing an international registration procedure.
While Malta is not a signatory to the Madrid protocol, the European Union is, and therefore one can nevertheless opt for this route by using a Community Trademark as the basis for international registration.

WIPO will formally examine international trademark applications, however each country in which registration is sought may further examine the application. Therefore, essentially this route may still involve dealing with numerous entities across different states. Furthermore, one would still need to meet any substantive requirement applicable in each country of registration.

Any protection conferred through such registration is equivalent to that obtained through national registration and the resultant effect is a bundle of national trademarks under one international registration number. It is also possible to extend an international registration to new territories at a later stage. 
One significant disadvantage faced by this type of registration is that throughout the first five years of its existence, it is dependent on the trademark of origin. Should one face any problems in relation to the basic registration throughout this dependency period of the international registration, the latter will also be impacted. Therefore, should other companies or competitors find a valid reason to challenge the trademark of origin throughout this dependency period, it would also result in losing one’s international registrations, a process widely-known as a “central attack”. 

3.    Community Trademark 

Since 1996, the EU has offered the possibility of registering what is known as a community trademark (“CTM”) which is applicable across all twenty-eight EU Member States. This is a very effective and economical tool for businesses operating in various states throughout the EU, easing the administrative and monetary burden that separate registration in each EU member state would pose. Using the trademark in just one Member State may be enough to merit protection across the EU. Applications are processed through the EU’s Intellectual Property Office (EUIPO). 

One clear disadvantage of this system is that opposition to the trademark may be lodged from across the EU, and objection in just one part of the EU might lead to a rejection of the entire application. Third parties may oppose a CTM application on two grounds, the first being that they possess an earlier right which they believe that your CTM would conflict with, if registered. Additionally, a CTM may be opposed by invoking the widely-construed “absolute ground”, which is based on the failure to satisfy the requirements for a trademark; which include; being distinctive, non-descriptive of the business within which one operates and being clearly represented.  

A CTM registration normally takes significantly longer than a local registration. It is also possible to use a CTM as the basis for an International registration under the Madrid system.


Author:  Timothy Spiteri
The information provided on this website is intended to convey general information only and does not, and is not intended to, constitute legal advice. Should you wish to obtain further information and advice on this subject we invite you to get in touch with one of our practitioners.


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