Graphical Representation And International Trademark Registration
In the trademark world, as indeed in life in general, everything is interconnected and small changes in one area can lead to knock on effects in another. The business world is global and for many companies, expanding their customer base across regions is a necessary goal for commercial success. It’s critical to understand the potential implications of changes to the trademark process in key regions for your business around the world.
Removing the requirement for graphical representation in the EU:
A European Union Trade Mark (EUTM) is a unitary application which for the moment, covers all 28 Member States. This is likely due to reduce to 27 with the coming ‘Brexit’ of the UK from the EU although quite how and when this will happen is uncertain. Until last year, a ‘graphical representation’ of the proposed mark was required to accompany your application for the registration of a trademark.
That requirement has now been lifted which, in theory, opens the door a little wider for non-conventional trademarks which have historically struggled in Europe. However, that requirement for graphical representation has not been lifted everywhere.
Where is the graphical representation still required?
Most critically amongst the registries which still require that a mark intended for registration as a trademark be capable of being represented graphically, is that of the World Intellectual Property Office, which oversees the Madrid system of international trademark registration in Geneva. The Madrid system represents a centralised application system for the large number of countries that are part of this system. Unlike the EUIPO system it is not unitary. It is instead a collection of individual regional registrations with a single point of application to ease the administrative burden.
What does this mean for international trademark owners?
Key amongst the considerations for international trademark owners in developing a strategy for new brands is the establishment of ‘priority’ of your use of the brand. From an international perspective, establishing priority means that in the event of a dispute with an identical or similar mark, the one with the earliest priority will gain the exclusive rights to the use of the mark. If your intended mark cannot be represented graphically but is suitable for use as an EUTM then you will not be able to extend the scope of protection for the mark through the Madrid system. That said, you may be able to extend the scope of the protection across some of the desired regions individually but not all accept applications in respect of marks that cannot be represented graphically.
International filing strategy:
The question of priority is an important one in deciding where, when and in what order to file applications to register your brands as trademarks but it is far from being the only one. The length of time it takes to register a trademark across different regions is also a key factor in your filing strategy. You can download our essential eBook here.