International filings and actions
Trade Mark Direct can arrange low cost trade mark registration in any country worldwide, from the USA and Australia to Iceland and Djibouti.
The USA, Canada, China and Australia are four of the most popular registries for overseas filings. Below is some introductory information for filing in these countries. The calculator on the right gives an initial fees estimate. Contact us for more detailed information and a formal fees quote.
Please note, we're sometimes asked for worldwide registration. There is no single application for this, but application and cost is on a per territory basis. For a word mark in one or 2 classes, best to budget about half a million UK£ for all countries worldwide. And we're cost-effective on this!
Madrid System / World Intellectual Property Organisation (WIPO)
The Madrid system operated by WIPO offers a streamlined and sometimes lower cost route for filing a trademark in multiple registries internationally. Most of the major economies are part of the system although Canada, Brazil, Thailand many Middle Eastern countries are not.
Wipo fees makes it uneconomic to use Madrid system for filing in just a few countries, the cut-off is nomrally more than 4 or 5. Also it is necessary to have a base registration (e.g. a UK, EU or US registration) on which to base the application first. This needs to be complete as failure of the base registration throws the whole WIPO application.
For more detailed information
The process in the USA, is broadly similar to the UK, EU and other registries worldwide. An examiner checks the application to be sure it meets US trademark law requirements, and then it goes for publication for three months. A key difference is that the examiner can object to registration on the basis of similarity to a mark(s) already on the register. Overall the US process is slower and the examiner's more finickity than both the UK and even the EU. Applicants should expect some delay and frustration along the way!
Your application can either be filed based on current use of your trade mark in the USA or on intention to use. If the mark is not yet in use in the US, you have six months from the time of registration to supply a specimen of use with an additional fee, which is dependent on the number of classes. If you do not have it in use by the end of six months, you can request more six-month extensions up to a total of three years, paying the same fee for each extension period.
If basing the US application on actual Use in commerce or Intent-to-use, rather than an existing UK or CTM application/registration, then a Statement of Use will need to be filed and additional fees may apply.
Please be aware that additional costs may be incurred as applications progress; the level being dependent upon the nature of any objections raised or oppositions filed.
To discuss or for a formal fees estimate please contact us.
Unlike the USA and the rest of the world Canada operates a very idiosyncractic registration process. There is no class system and registrations typically take 2 years from filing. Clients are advised to budget about £2200.
A trade mark application in Canada can be filed on the basis of any one of the following four options: 1. Use in Canada, 2. Intent to use in Canada, 3. Making known in Canada, 4. Use and registration abroad.
Similar to the USA, the process has classes, examination and then publication, but is bureaucratic and can be laborious. Here to an examiner checks the application to be sure it meets hinese trademark law requirements, and can also oppose on the basis of similarity to a mark on the register, tratehr than as in the UK and EU this being the responsibility of the owner. The process takes some two years and unexpected delays should be anticipated.
As the Australian system was started using English Law many similarities between the processes remain. Registration is normally within 6 months and costs only slightly more than in the UK.