Registering a trade mark overseas

There are a number of ways to register a trade mark overseas. For example:

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1. you could apply to register your trade mark separately in each country you want to cover (ie apply on a country by country basis). This is usually the most expensive approach, but gives you the most flexibility.

2. you could apply to register your trade mark in a region, if a suitable regional registration is available. For example, regional registration for the European Union is possible. This can provide a relatively cheap and efficient way to cover a number of countries. However, as discussed below, it can create issues too.

3. if you alreay have a trade mark, or at least have applied for one, you may be able to apply for an "international trade mark" in countries which have signed up to the Madrid Union (sometimes called Madrid Protocol applications). As at August 2019, there are 121 countries in the Madrid Union, and the registration process is relatively cheap and easy - at least as long as it goes smoothly. Like regional registration, applying for an international trade mark also has its downsides.

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While international trade marks, and regional trade mark registrations, sound great, they are not always the right way to go. There are too many potential issues which can arise with international trade marks and regional trade marks to try to list them all, but to give just a coupl e of examples:

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• an international trade mark application must be for exactly the same trade mark in the same trade mark classes and for the same goods and/or services in each country to be covered by the international trade mark. This can cause problems for your application in some countries because some countries in the Madrid Union still apply their own peculiar rules and regulations. An example is China, which is in the Madrid Union but applies an idiosyncratic "sub-class" system, and also generally expects goods and services to be described in particular pre-approved ways. This can mean you need a specifically designed trade mark application to succesfully register your trade mark in China.

• regional registrations are often "all or nothing", ie if your trade mark application runs into a problem in any of the countries in the region, your application may fail altogether.

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The bottom line is, if you want to register your trade mark in a number of countries, getting good advice from the start about the best way to do that can save you a lot of money and trouble in the long run.