Before deciding to apply for a registered trade mark Waterfront advise clients to consider the location in which they wish to apply for the trade mark. As trade marks are jurisdictional the registration will only cover the location in which it has been applied. For example, if the trade mark was applied for in the UK and somebody else is using the same mark elsewhere across the world then the trade mark could not be enforced against them.
Philip Partington, solicitor at Waterfront, says: “The most common approach for UK businesses is to apply for a UK registered trade mark at the UK Intellectual Property Office. Alternatively they could apply to the Office for Harmonization in the Internal Market (OHIM) in Alicante for a European Community Trademark.” The latter of the options means that the trade mark will cover all 27 member states of the EU and therefore offer businesses a wider net of protection.
Waterfront suggest that the best advice is to discuss specific requirements with an intellectual property solicitor as businesses will need to make use of the trade mark within the jurisdictions in which it is registered. If a business is registered outside of the EU then it will need to consider applications in the jurisdictions for that specific location.
For more advice on applying for a trade mark contact Waterfront Solicitor’s dedicated Intellectual Property team in London at http://www.waterfrontsolicitors.com/