International Rules of Trade Marks

A Trade Mark is a type of Intellectual Property that consists of a sign, design or logo that identifies products or services and distinguishes them from competitors. You must register in each country in which you would like to obtain protection.

Did you know there are different rules regarding International Trade Marks? Our team share some of the top international rules with you:

1.     Trade Mark vs Trademark vs Trade-mark

There is often a lot of confusion between the three different spellings of Trade Mark. The Pure Ideas Head Office is in the UK. Therefore we stick to “Trade Mark”.

• Trade Mark is typically the UK spelling and used by The Chartered Institute of Trade Mark Attorneys (CITMA)
• Trademark is the spelling used in US and used by the World Intellectual Property Organisation (WIPO).
• Trade-mark is the spelling used in Canada.

2.     Jamaica

In order to search for registered Trade Marks, you must physically visit the Jamaican Trade Mark and Patent office. Apple recently avoided Trade Mark sleuths by preemptively filing in Jamaica for this very reason.

3.     Maldives

The process of Trade Mark registration in Maldives does not include the stages of filing, examination, and advertisement. This is unlike many other countries. It is based on the publication of a Trade Mark (TM) Cautionary Notice. A Trade Mark cautionary notice is a publication of a notice in the newspapers to notify the public about the mark that is registered, along with the legal Trade Mark rights of its owner.

The cautionary notice should include the details of the proprietor, a description of the Trade Mark, and the classification of the goods or services according to the Nice Classification. Foreign applicants are required to publish a TM cautionary notice in the local newspaper in both English and in the vernacular, which is Dhivehi. Thereby, cautioning the public and trade about the ownership of the Trade Mark.

4.     UAE

UAE is an example of a country where multiclass applications are not available. A separate application must be filed for each class and the official application must be filed in both Arabic and English translations.

5.     China

The Trade Mark application process in mainland China follows the “first to file” principle. At the filing stage, the applicant does not need to provide evidence of actual use or intention to use the applied-for mark unless requested in limited circumstances.

6.     USA

In the US the office requires a filing basis:

• Use in Commerce basis – you are currently using your mark in commerce with your goods or services
• Intent-to-use basis – you have a bona fide intention to use your mark in commerce with your goods or services in future.
• Foreign registrationbasis you own a foreign registration of the same mark or the same goods and/or services from your country of origin.
• Foreign applicationbasis you own an earlier-filed foreign application that was filed within six months of your US application for the same mark and the same goods or services. This basis is also called a “foreign priority basis” because you are requesting a “priority” filing date for your U.S. application that is the same date as that of the foreign application filing date.

How to Register a Trade Mark

Now you know how complex the variances of international Trade Marks are, but how do you register?

This is where Pure Ideas can help. From searching and drafting to filing and maintaining your Trade Mark, wherever in the world it may be, we help you every step of the way and help build and protect your brand with you.

We have upfront fixed fees to protect your ideas, worldwide and tailor our services to meet your needs. But offer a non-obligatory first meeting to discuss what your needs are. If you have any questions, get in touch with a member of our team who will be happy to help.