Changes to the UK trade marks system over recent years mean that there are now four ways of obtaining trade mark protection in the UK. An applicant has the choice of filing an application in the UK or Community, but in both cases, an applicant also has the additional option of filing the applications through the Madrid Protocol system instead of filing individual applications. Which of these systems applicants eventually select will depend on their commercial priorities, the nature of the trade mark and their attitude towards risk.

Perhaps the most straightforward of these routes is to file a national application in the UK. Filing a national application means that the application is not dependent on registrations in other jurisdictions and although a UK application is examined on the basis of both distinctiveness and earlier marks, it is only examined against earlier UK and Community registrations and applications and unregistered rights existing in the UK. All of this means that UK applications actually encounter fewer oppositions and once registered, there is a prima facie presumption of their validity. In addition, the UK Office runs an efficient system often allowing for the registration of marks in 6-7 months.

Following the enlargement in May 2004, the Community Trade Mark (CTM) system now provides protection in 25 European countries (link ) by means of a single application. The unusual feature of the CTM system is its unitary nature and this provides both advantages and disadvantages for potential applicants. There are clear cost advantages in filing a CTM application if applicants need protection in 3 or more of the countries covered. In terms of prosecution, applications are examined for distinctiveness but not against earlier rights, it being left to the owners of earlier CTMs, national registrations or national unregistered rights to monitor applications and object through opposition proceedings. Given the sheer number of potentially conflicting registrations and unregistered rights across all 25 Member States, it is perhaps not surprising that about 20% of CTM applications receive oppositions. Although many of these are settled amicably before the adversarial part of the proceedings commence, a proportion of applications are refused following successful oppositions. The downside of the unitary nature of the CTM system is that some CTM applications are refused on the basis of a registered or unregistered right in a single Member State, leaving it to the applicant to decide whether to convert the application into national applications in the other Member States. However, set against this is the fact that if a CTM registration is obtained, its unitary nature means that it is often sufficient to use in a single Member State in order to maintain the validity of the registration for the whole of the Community.

Following the accession of the CTM system to the Madrid Protocol, it is now possible to designate both UK and CTM applications within a Madrid Protocol application. Whether this route is chosen will depend on a number of factors. There are of course cost benefits on filing, which make it an attractive option, especially to applicants wishing to obtain consistent protection for a mark in a number of the countries included in the Madrid Protocol. However, the dependency of the Madrid application on the ‘home’ application or registration for the first five years of its life means that applicants must assess whether the protection afforded by the ‘home’ registration or application is sufficiently broad, for example in its specification, to support the Madrid Protocol application. This is particularly the case where the Madrid designates the UK or Community, in relation to which it is possible to obtain broad specifications. In addition, it is necessary for applicants to conduct a full assessment of the validity of the ‘home’ registration or application ensuring that to the best of their knowledge, the right is unlikely to receive objection either from the local Trade Mark Office or from third parties.