Exploring Trade Mark Protection Routes: EUTM or Madrid System?

When expanding your brand into multiple countries, securing trade mark protection across borders is crucial. With the European Union Trade Mark (EUTM) system and the Madrid Protocol for International Registrations, trade mark owners, particularly those based in the UK, can seek protection in the European Union (EU) and beyond, in a more streamlined and cost-effective way.

This guide will explore the different routes available to trade mark owners, comparing direct filing of an EUTM with international registrations under the Madrid Protocol. We will also look at strategies for both new trade marks and how to rationalize existing portfolios.

New Trade Marks: Choosing the Right Route

If your primary interest is in securing trade mark protection in most or all of the EU member states—without considering non-EU countries—the European Union Trade Mark (EUTM) route is often the most economical and efficient option. It offers unitary protection throughout all EU countries with a single application, saving both time and cost compared to individual national registrations.

However, if only a few specific EU countries are of interest, and there is an existing “home” trade mark application or registration (such as in the UK), then using the Madrid Protocol may be more appropriate. This system allows trade mark owners to designate individual countries within the EU and other countries in the Madrid System, providing flexibility and reducing costs for targeted protection.

Comparing EUTM and Madrid Protocol

Advantages of the EUTM Route

Broad EU-Wide Protection: A single EUTM application covers all EU member states, ensuring that your trade mark is protected even in countries where you may not currently operate but could expand into in the future.
Simplified Use Requirement: With the EUTM’s unitary system, genuine use of the trade mark in one EU country is generally sufficient to maintain protection across all member states, unlike national registrations which often require use in each country.
No Prior Registration Required: Unlike the Madrid Protocol, an EUTM does not require an existing “home” trade mark application or registration to serve as the basis for filing. This makes it more suitable for companies looking to establish their first international protection without being tied to a prior national application.
Active Opposition System: The EUIPO does not automatically reject applications based on existing prior trade marks. Instead, owners of earlier marks must actively oppose an application during the opposition period. This often means that old or unused trade marks won’t automatically block your application unless the owner takes formal action.

Disadvantages of the EUTM Route

Single Country Objection Risk: An EUTM application can be blocked or refused if it faces valid objections on “absolute grounds” in just one EU country. For example, if the trade mark is deemed descriptive in one language (e.g., Portuguese), the entire application could be rejected.
Opposition from Any EU Country: A successful opposition from an earlier right in any EU country—whether or not that country is of interest to you—could prevent the registration of your EUTM. If an opposition is successful, the EUTM can be converted into national applications in countries where no conflict exists, but this is a more costly route than filing individual national applications from the outset.
Delays Due to Opposition: The EUTM registration process can be delayed significantly if opposition proceedings occur. In some cases, registration may be delayed for years, especially if complex opposition or litigation is involved.

Madrid Protocol: Flexibility in International Registrations

The Madrid Protocol offers a flexible alternative, allowing trade mark owners to designate specific countries, including EU member states, as part of an international trade mark application. This system can be particularly useful for businesses seeking protection in both EU and non-EU countries.

Advantages of the Madrid Protocol

Tailored Coverage: The Madrid Protocol allows applicants to choose only the countries of interest, meaning you won’t need to apply for protection in the entire EU if only a few countries matter to your business. This reduces costs and limits the risk of opposition or objections in countries you’re not actively targeting.
Modular System: If you face objections in one designated country, it can be excluded from the registration without affecting the other designated countries. This modular approach reduces the impact of objections or oppositions on the entire registration process.
Cost-Effective Expansion: The Madrid Protocol allows for additional countries to be designated later on, offering cost-effective options to expand protection over time. This is particularly advantageous if you plan to gradually enter new markets.
Faster Protection in Some Countries: Some EU countries may grant rights more quickly through the Madrid system compared to an EUTM application, which could be important if you anticipate potential infringement early on.

Disadvantages of the Madrid Protocol

Dependency on “Home” Registration: The Madrid Protocol requires an existing national registration or application, known as the “home” registration. For the first five years, the international registration is dependent on the continued validity of the home registration. If the home application or registration fails for any reason during this period, the entire international registration could be invalidated.
Separate Use Requirements: Unlike the EUTM, use of the mark in one designated country generally won’t support the validity of the registration in other designated countries. Each designated country typically requires independent proof of use to maintain the registration.
National Examination: In some countries, designations under the Madrid Protocol may be subject to examination for prior conflicting trade marks. In cases where older, unused marks block registration, it may be more difficult to overcome these objections compared to a direct EUTM filing.

Which Route is Best for You?

The decision between filing an EUTM or using the Madrid Protocol largely depends on your business strategy and the countries where protection is needed.

If you need broad EU-wide protection and don’t have an existing home registration, the EUTM route is generally the most straightforward and economical choice.
If you need protection in only a few EU countries, or if you are targeting non-EU countries as well, the Madrid Protocol offers greater flexibility and cost efficiency.
If you already have national registrations in certain EU countries, it may be worth considering the Madrid Protocol to consolidate your portfolio and extend your protection to additional markets.

Existing Trade Marks: Rationalizing Your Portfolio

For businesses with an existing portfolio of national registrations, converting to an EUTM or utilizing the Madrid Protocol can result in substantial cost savings. An EUTM can replace multiple national registrations, simplifying renewal and maintenance efforts.

Similarly, the Madrid Protocol can be used to cover multiple countries with a single registration, reducing administrative costs and complexity. Existing national registrations can often be maintained, but businesses may choose to consolidate rights for efficiency and to extend protection into new countries at the same time.

Conclusion

Choosing the right route to trade mark protection in the EU and beyond depends on a variety of factors, including the countries of interest, the existence of prior registrations, cost considerations, and strategic goals. Whether through the European Union Trade Mark (EUTM) or the Madrid Protocol, securing your brand’s protection can be more efficient and economical with the right approach.

For expert advice on navigating these options and ensuring your brand is fully protected, our team is here to help with tailored solutions for your specific needs.