WIZ-10

UK / EU base + International Registration + up to 10 Designations / Territories

We will prepare and file a UK or EU base application as well as an international registration covering a choice of up to 10 designated territories. The international registration will then be forwarded to the World Intellectual Property Office [WIPO].

The International Registrations will be filed through either the UKIPO or the EUIPO, depending on where the base is, and then be forwarded to the World Intellectual Property Office [WIPO].

Only £1,000+VAT
plus a £25+VAT Admin Fee for each application [two maximum]
& Official UKIPO/EUIPO Fees.

Please note that there is a £25+VAT admin charge for each application that we submit and each file that we open. For this package, the initial admin charges will cover the base application and the application for the International Registration. Once the WIPO fees are paid and a commitment is made to the designated territories, there will be a separate admin charge for each territory.

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

100% free advice from Qualified Professionals

Not sure what 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.

What's Included

Trade Mark protection can be a complex process where you can encounter technical legal difficulties. We have tried to explain the filing process in simple terms, but we understand that you may have more questions about what is involved. If so, just ring our office and speak to an expert – we are happy to answer any queries!

1

UK / EU Base Application

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

2

International Registration

The International Registrations will be filed through either the UKIPO or the EUIPO, depending on where the base is, and then be forwarded to the World Intellectual Property Office [WIPO].

3

Up to 10 Territories
(Choose from 116 countries)

This package covers up to 10 of the Madrid Protocol territories. You can apply for protection in any of these jurisdictions.

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

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

It should be noted that the number of countries and Classes that you choose in your filing project will impact on the government and official fees payable. The official fees relating to the base application / registration and the initial international application will be payable on filing. The WIPO fees will be payable around 4-8 months after filing.

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.

4

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.

5

Focused International Strategy Advice

We will work with you to find a solution and project that suits your business and budget, and devise a focused filing strategy to ensure that a solid detailed plan is established in order for you to move forward with local and international protection.

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, EU 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

Costs Spread Over 12-24 Months

The International Retainer allows you to spread the cost over time. The costs are usually dealt with in the following stages.

Stage 1 – filing of base applications

Stage 2 – filing of international Registration at WIPO through the national office of origin

Stage 3 – payment of WIPO fees relating to the designated territories and Classes

It should be noted that further fees may be required if there are local examination queries, registry issues and objections that need to be dealt with, or if there are any third party challenges or oppositions.

10

Trade Mark Monitoring

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 chose key territories, just let us know, and we will advise you on additional / subsequent designations and monitor your mark globally in the additional jurisdictions.

11

24/7 Access to Strategy and Litigation Team

All of our clients are welcome to call our office and speak to a member of our team in any department at any time, whether your query concerns a technical formality, a challenge against you, or that someone is using your brand without your permission.

We understand that trade mark and design protection is a complex area of law, and we will do our utmost to advise and guide you through the process so that you obtain the best value from our service.

It is always the case that some clients prefer to call the office instead of sending long e-mails, and we absolutely no problem with this.

Enquire Now

Making a Trade Mark application with Trade Mark Wizards is easy, we do all the hard work so can concentrate on running your business.

Call, email or complete the the short form to start the process.

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