WIZ-3

To whom is this package suited?

• Business that have global and international expansion plans.
• Businesses that need to secure their trade mark protection in different territories.
• Businesses that sell their products and services around the world.
• Businesses that want to move quickly and ensure they are protected in foreign jurisdictions as fast as possible, but do not wish to pay official local fees immediately on filing.

Get advice from qualified professionals

Not sure which classes you require? Do you need EU or international protection? We understand that trade mark law can be complex; that’s why our team is here to help! Call us today for a free 15 minute consultation with one of our Trade Mark Attorneys.

①

Brand Protection Strategy

Before we can file your trade mark application, it is vital that we undergo research of your brand and business to devise your comprehensive Brand Protection Strategy. A focused Brand Protection Strategy will ensure that a solid detailed plan is established in order for you to move forward with local and international protection.

In the Brand Protection Strategy, we analyse your brand and provide formal legal advice relating to your prospective trade mark application. This will include a list of classes relevant to your brand (with a snapshot of goods/services), a breakdown of your branding elements, registrability advice, high risk searching advice, and costs related to drafting the specification, alongside preparing and filing the application.

We provide the Brand Protection Strategy at a cost of £150+VAT for one trade mark application in the UK plus two other territories and £50+VAT for each additional territory / application.

②

UK Base Application

We will prepare and file a UK base application, and then we will file an International Registration designating the territories that you require protection.

③

International Registration

The International Registrations will be filed through the UKIPO and then be forwarded to the World Intellectual Property Office (WIPO).

④

Choose from 130 Territories

You can apply for protection in any of the Madrid Protocol territories.

Please click here for available territories and countries covered in the International Registration.

It should be noted that the number of countries and classes that you choose in your filing project will impact the government and official fees payable

The official fees relating to the UK base application and the handling fee for the initial international application will be payable on filing.

As far as the WIPO fees are concerned, you have the option of paying these directly upon filing to expedite the process. Alternatively, these will become due around 4-6 months after filing. Payment of the WIPO fees is essential so that your International Application is forwarded to the Local Registries for substantive examination. The WIPO fees are not included in our prices.

If there are any territories that require protection which are not part of the International Registration system, we will need to file separate national registrations for these jurisdictions. We can provide separate advice and cost estimates for such national registration projects. We are able to protect trade marks in all countries around the world that have trade mark laws.

⑤

Global Screening Search

Our strategy team will conduct searches for identical marks that might conflict with your applications in the territories that you wish to cover. This will allow you to see how unique your trade marks are in those places. It will also give you an indication as to whether there are any high-risk obstacles that could stand in the way of your applications, as this will of course affect your decision as to whether you want to make the investment to protect the brand in particular localities.

We will conduct Worldwide and Regional Identical Screening Searches in national registries globally for any identical matches of your trade marks and provide you with the statistical data needed to see whether your trade marks have been applied for or protected by a third party in the classes of interest.

Global searches are essential because your international applications can be objected to by owners of earlier conflicting trade mark applications and registrations in any territory that you decide to cover.

The above searches are not substitutes for full clearance searches, which will be charged at our standard rate.

⑥

Territorial & Local Registry Advice

If requested, we will provide advice relating to the registrability of your trade mark in a particular territory by liaising with one of our local associates in that jurisdiction.

This advice will be confined to an inherent registrability assessment. You also have the option of obtaining a formal opinion where an in-depth analysis is required. A formal in-depth opinion may incur further costs.

⑦

Preliminary Local Advice on Refusals & Objections

Once the WIPO approves your International Registration, the matter will be passed to the local registries of the designated countries for processing with the aim of obtaining protection in those designations.

It is not unusual for local registries to issue notices relating to adherence to formalities, which usually includes requests for editorial amendments to specifications of goods and services. On top of that, it is possible that more serious matters can be raised, such as general eligibility for registration and the presence of earlier conflicting marks in that territory that might block your application.

When reporting any notices from local registries, we always accompany this with a report and advice on moving forward, together with any further fees that might need to be incurred in overcoming any objections.

⑧

Reporting All Stages

For UK and International Registrations, we will report all stages of the application process to you, which include filing the applications, examination reports and irregularity reports that require your instructions, publication of the applications and designations, opposition periods, registration and renewal deadlines.

If there are any challenges made by third parties, we will also bring these to your attention.

⑨

Trade Mark Monitoring (Optional)

We will monitor your trade mark in the UK, EU and Madrid Protocol territories of your choice during the application process using the latest trade mark watching AI technology. This means that we will notify you if there are any identical or similar marks filed by others that might conflict with your trade mark.

If you have further international plans for the business outside the chosen key territories, just let us know, and we will advise you on additional / subsequent designations and monitor your mark globally in the additional jurisdictions.