Taking your brand abroad: choosing the right trade mark application strategy

International expansion creates opportunity, but trade mark rights are territorial. An application programme should therefore follow the commercial plan: protecting the markets that matter now, whilst preserving room for the next stage of growth.

Start with the commercial map, not the application map

Applying in every possible territory is rarely necessary or proportionate. A useful first step is to divide countries into three groups: core markets in which protection is needed immediately; near-term markets likely to be entered within the next three to five years; and defensive markets where manufacturing, distribution or copying risks justify protection even if direct sales are limited. The exercise should cover not only the principal house brand, but also important product names, logos, slogans and local-language versions.

The application timetable should sit alongside clearance and launch planning. The six-month Paris Convention priority period can preserve the date of a first application for corresponding overseas filings, giving an applicant time to refine its territory list and confirm its budget. It is not, however, a substitute for clearance. A cost-effective identical mark screen that may identify obvious, serious obstacles should be considered a minimum, while a more comprehensive clearance search, which looks for similar marks, should ideally be undertaken before committing to a major launch or expansion into a new territory – whether directly or through local partners.

Specifications of goods or services covered by the application(s) also need to be forward-looking but credible: overly narrow wording can leave gaps, whereas unnecessarily broad claims may increase cost, objections and exposure to non-use challenges.

Choosing between the Madrid System and direct applications

An International Registration under the ‘Madrid System’ can be an efficient route for UK- and EU-based applicants. One centrally-filed international application, based on a qualifying UK or EU application or registration in the owner’s home territory, may designate several member territories. WIPO centrally administers renewals and many ownership or name changes, and additional member countries can be added later by subsequent designation. These features can make the Madrid System particularly attractive for a multi-country programme and for portfolios expected to evolve.

An international application may be based on either a pending home application or an existing registration. However, where timing permits, there can be advantages in waiting for the home application to achieve registration. This provides greater certainty that examination or opposition issues affecting the home application will not undermine the foundation of the International Registration. The decision may be different where an overseas launch is imminent or the applicant needs to meet the six-month priority deadline.

Another advantage of using the Madrid System is that it can reduce the need to engage local counsel at the filing stage. In many designated territories, the application can proceed to registration without the appointment of a local representative. If an objection, provisional refusal or other issue arises during examination, local counsel will generally need to be appointed to respond before the relevant national or regional trade mark office. Even allowing for that possibility, the Madrid route may remain more cost-effective than instructing local counsel in each country to prepare, file and prosecute a separate national application from the outset. In straightforward cases, local counsel may not be needed at all; where an issue does arise, local costs are incurred only in the territories in which assistance is required.

An International Registration is nevertheless a bundle of national or regional rights, rather than a single worldwide right. Each designated office examines the application under its own law, and third parties may oppose protection locally. The International Registration cannot cover a wider specification of goods and services than the underlying home application or registration on which it is based.

For the first five years following its registration date, the International Registration remains dependent on the basic home application or registration. If the basic right is refused, withdrawn, cancelled, allowed to lapse or restricted during that period, the International Registration may be cancelled or restricted to the same extent across all its designations. It may be possible to transform the affected designations into national or regional applications while retaining the original filing or priority date, but this involves additional applications and local costs.

"Regular", direct national applications may therefore be preferable where the basic mark is uncertain, only one or two countries matter, a locally tailored specification is needed, or an important territory should be insulated from central-attack risk.

In practice, a hybrid strategy is common: use the Madrid System for the majority of suitable countries, with direct filings for selected markets. This is particularly so since the Madrid System does not yet provide truly worldwide coverage. Qatar joined in 2024, Grenada followed in 2025, while 2026 has seen further expansion through Saudi Arabia and Jersey, meaning that the System now provides a route to protection across 133 countries. But important gaps remain and a filing strategy should not assume that Madrid alone will provide all the geographical protection required.

Where a commercially important territory falls outside the System, protection will generally need to be pursued through a direct national application, usually with local counsel. A comprehensive international filing programme may therefore combine Madrid designations with direct national applications and, where appropriate, separate designations for territories that might otherwise be overlooked.

You can learn more about the Madrid System in our guide, “Madrid System: The Basics”.

Common territories: practical points

Top tips for applicants

• Specification objections are common in many territories, including the US, Canada, Japan and South Korea. Thought should therefore be given to tailoring the specifications at the filing stage, versus responding to objections if/when raised.

• File early in first-to-file territories and decide local-language branding before distributors or consumers do it for you.

• Use the six-month priority period to stage the programme, while completing clearance and agreeing budgets in parallel.

• Ensure that the basic mark is robust before using the Madrid System and consider direct filings for strategically critical territories.

• Compare whole-life cost, including objections, local representatives, proof-of-use filings, recordals and renewals.

• Keep territory-specific evidence of use, including dated packaging, invoices, advertising, website captures and distributor records.

• Revisit the portfolio when the brand, products, ownership or priorities change.

How we can help

There is no one-size-fits-all route. Mewburn Ellis can help to map commercial priorities, clear key marks, create suitable specifications of goods and services, compare the Madrid System with direct national filings, coordinate trusted local counsel and provide costed recommendations. If you are planning an international launch or expansion, approaching a priority deadline or reviewing gaps in an existing portfolio, please contact our Trade Mark team to discuss a practical filing strategy.