Purchasing International Trade Marks

Question

Please can you advise me on where to buy international trade mark for our brand?

Is it more to include a logo?
What if the logo ‘evolves’ over time?
Do you know the cost for world wide cover?

Thanks

Answer

Hi Luke
Trademark protection is normally territorial. It used to be done by country. By brand or logo. So to be covered in three classes could cost between £500 to £800 per country. Each country would have a different charge, and a different charge to update it.

You can now take out an EU community trademark which includes the UK
https://oami.europa.eu/ohimportal/en/
There is also an agreement between some other countries called Madrid Agreement.
You may also need to use a trademark agent / lawyer.
You can also find details here
https://www.gov.uk/how-to-register-a-trade-mark/register-a-trade-mark
Gilio

Answer

We have one for the UK but our application in the US was refused.

Be careful if you apply for one in the UK. I got sent a dozen unsolicited letters asking for a ton of registration fees. It was an absolute scam which I didn’t entertain for a second.

Lee

Answer

In addition to previous responses – you must apply for a trade mark either at National Intellectual Property Offices (like the UK IPO) or at the likes of OHIM (mentioned before) for coverage for Europe (one application) – this will be examined. For example to check that your mark is not similar/identical marks for similar/identical good/services. The examiner will also conduct a number of other checks to ensure your mark complies with the law, for example your mark should be distinctive and not descriptive of your goods and services (but there may be ways around this). Careful consideration of the trade marks and/or logos you use or intend to use is required as well as searching for other marks that may already be in use (registered or otherwise). Professional advice via a trade mark attorney is recommended.

It does not necessarily cost more to register a logo (but you would need to register a word mark separately if appropriately). If you logo were to evolve over time, you will probably have to file a new application for the new design – hence careful consideration at the outset is advised to ensure you protect the most appropriate logo(s)/marks.

As well as the UK IPO there are also a number of other useful (and often free) resources to help you with IP queries as set out below. Hope of help!

EEN – http://een.ec.europa.eu/
IPR Helpdesks:
EU IPR Helpdesk – www.iprhelpdesk.eu / China – http://www.china-iprhelpdesk.eu/ / ASEAN – http://www.asean-iprhelpdesk.eu/ / Mercosur – http://www.mercosur-iprhelpdesk.eu/ / India – http://ebtc.eu/

IP Audits – various UK grants available
CIPA/ITMA- http://www.cipa.org.uk/ / http://www.itma.org.uk/

BIPC (@UK Libraries) http://www.cipa.org.uk/pages/advice-clinics
IP Search Tools – eg Espacenet; TMView; NIPOs; Orphan Works

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