Once you’ve registered your business name with the United States Patent and Trademark Office, you may be considering international trademarks. Because trademark protection is only granted in the countries in which your trademark is registered, it is important to have a strategic international trademark plan. A trademark registered with the United Kingdom will provide protection in England, Scotland, Wales, and Northern Ireland. Whether you have current customers in the United Kingdom or you plan to expand there in the future, it is a good idea to trademark your business name in the UK since it is such a common trading partner with the United States. Consider these 5 steps when registering your trademark in the United Kingdom.
1. Consider the Madrid Protocol or an EU Registration
The Madrid Protocol allows trademark owners to complete a single application which can then be applied to over 90-member countries, including the United Kingdom. While the Madrid Protocol may lower the initial cost of the application process, it does not speed the process to register, especially in the UK, which currently has one of the fastest registration processes. Also, any application filed through the Madrid Protocol would be completely dependent on your US trademark being registered (and maintaining that registration). If your US registration is canceled, any countries that you have obtained a registration through the Madrid Protocol will likewise cancel your registrations. The Madrid Protocol is best used if you are planning to file in a long list of countries. If the UK is a particularly important market for your company you should consider a direct filing to get the registration quicker, and, to avoid having the fate of your UK registration tied to that of your US registration.
The European Union also offers a one-application option. The Community Trademark, or CTM, currently gives trademark owners trademark protections in the 28 countries that make up the European Union. When applying to a CTM, registrants pay only one fee, instead of a fee for each individual country, making it a cost-effective way to register in Europe. Unfortunately, given the political uncertainty surrounding BREXIT, trademark holders would be smart to file in the UK directly as well as filing for the broader “Community Trademark.”.
2. Work With a Trademark Attorney
It can be challenging to manage international trademark filings, especially if you are trying to register in more than one foreign country. While there are many similarities in trademark laws by country, there are also plenty of differences. Working with an experienced trademark attorney can help you navigate the process to trademark your business name in the UK. If you have worked with a US trademark attorney for your initial trademark filing in the US, that attorney will many times have relationships with UK based attorneys as well and can help you navigate the process.