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Tips for Filing a Trademark Application in Multiple Countries

Introduction:-
In order to utilize your trademark in countries other than the United Kingdom, you must submit an application to the trade mark authority in each respective country.
 
 
However, European and international application systems also exist.
 
Both encompass a wide range of countries and provide additional potential advantages, such as:
 
     less to pay
 
     less paperwork
 
     reduce the expenses of intermediaries
 
     accelerated outcomes
 
     effortless implementation
 
In order to submit an international trademark application, it is necessary to have a base application or registration in the United Kingdom.
 
International trade mark protection
 
You can apply to register your trade mark in countries which have signed-up to an agreement, called the ‘The Madrid Protocol’. 
 
 
The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO), which is situated in Geneva, Switzerland. A catalog of member countries that an international application can encompass is available on their website.
 
 
  An international application must be predicated on an extant trademark application or registration in one of the member countries. Your international application must be identical to your
UK trademark application or registration if you submit it through the UK office. You may submit your international application concurrently with your UK application, or at a later date if you prefer. Note that designations of the United Kingdom in international applications lodged on or after January 1, 2021 will automatically be afforded protection in Gibraltar without any need for applicants to seek to register their trade mark in the territory.
 
If you have made an application for a European Union trade mark (EUTM ) at the European Union Intellectual Property Office (EUIPO), you can use that as a basis for an international mark. Nevertheless, you are required to submit an application for that mark through EUIPO. The forms and expenses are available on the EUIPO website.
 
Additionally, you may utilize your UK trademark application to assert priority when submitting an international trademark application, provided that the application is submitted within six months. This means that your subsequent application will be regarded as if you applied on the same date as in the UK
 
 
 The cost of applying for trademark protection is contingent upon the number of countries in which you wish to have your trademark protected. The WIPO website contains a fee calculator and a catalog of fees
Payments must be submitted to the World Intellectual Property Organization (
WIPO) in Geneva in Swiss francs (CHF). When a WIPO reference is received, the WIPO E-Payment service should be employed. 
 
 
 

How to submit an application for an international trademark
 
Only the holder (or his representative) of the UK trade mark may submit any international application form[
Trademark-R].
 
In general, only the holder (or his recorded representative) of the UK trade mark may submit any international application form. In order to submit a form, it is necessary for any other individual to have a link to the case.
 
In the event that your international trademark is challenged
 
An international application may be targeted in two ways: 
An attack on the base mark in the office of origin
 
There are two potential methods of contesting an international application:
 
In the event that your UK trademark application undergoes modifications
 
The international registration is dependant for 5 years on your UK registration remaining in force during this period. In the event that your UK trademark is challenged in any capacity, the international application will be similarly impacted. An application or registration may be subject to opposition, revocation, cancellation, or invalidation, and it may expire if renewal fees are not paid.
 
If this occurs, you are able to convert your International mark into national applications. More information regarding this procedure is available on the website of the World Intellectual Property Organization (WIPO).
 
Opposition in any of the designated countries
 Your trademark may be opposed in any of the designated countries; however, if it is successful, it will only impact the international registration in that country. 
 
 If you withdraw or lose your challenge to an opposition and someone opposes your mark, you may be required to contribute to the other individual's expense 
 
If your international application is being opposed, it may be beneficial to consult with a professional which is Trademark-R. 
 
 European trade mark protection
 
If you wish to obtain trademark protection in countries that are members of the
European Union (EU), you may submit an application for a European Union Trade Mark (EUTM) through the European Union Intellectual Property Office (EUIPO), which is situated in Alicante, Spain.
 
The cost.
 
The trade mark application fee is:
 
€850 for first class of commodities or services or €1000 if filed on a paper form
 
€50 for second class
 
€150 for third class
 
€150 for the fourth and all subsequent classes
 
The application fee for the collective mark is as follows:
 
€1500 for electronic filing or €1800 for paper filing.
 
€50 for second class
 
€150 for third class
 
€150 for the fourth and all subsequent classes
 
All fees must be remitted directly to EUIPO in Euros.
 
How to submit an application for a European Union trademark
 
You can complete in an online application form on the EUIPO website, or print the form and then fill it in.
 
It is mandatory to employ one of the 23 official languages of the European Union. You must also specify a distinct second language from the 5 formal languages used at EUIPO.
 
If any information is missing, EUIPO will contact you. You are required to respond directly to the EUIPO within the designated time frame.
 
Professional assistance with your application such as
Trademark-R.
 
A European Union trademark application may be submitted by any individual to the European Union Intellectual Property Office (
EUIPO).
 

If you do not have a real and effective establishment, a domicile, or a place of business in the European Union, you are required to designate a representative to represent you in all proceedings before the Office.
You can only choose a completely qualified legal professional (such as a solicitor or barrister) or a specialist in IP law that is based in the EEA which is
Trademark-R.


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