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Can I register my trade mark internationally on a budget?

So many businesses these days have an international presence, whether that be by having physical trading premises in different countries, or simply by providing their goods and all their services to customers who are located in different parts of the world.

Ideally, such businesses should protect their trade marks in all of the territories where they conduct trade. However, the cost to file trade mark applications internationally can really add up. Particularly if a business, for example, supplies a wide range of goods that would fall under numerous classes or categories and/or they offer worldwide shipping, for example. You could be looking at skyrocketing costs, just to secure trade mark protection in all of the places where you operate. So whilst the costs of registering overseas are what they are and cannot really be ‘reduced’ or discounted so to speak, there are ways to manage the costs.

There are some ways to keep these filing costs within a budget. The first step would be to do some old fashioned business analytics and forward projections, basically to assess what’s the breakdown of the current and projected orders by country. And that way, you can gauge which countries and territories are more important to the business, in terms of protecting the brand. And therefore, they should be a priority for filing trade mark applications. And that analysis can also identify what are the core goods or services to each country or territory, because they may differ, depending on the countries on territories and the demand for certain products or services in different parts of the world.

You do not necessarily then have to file a trade mark application covering all of your goods and services in every country where you operate. You want to look at whether you’re actually providing all of your goods and services to all of those countries. And if not, you might want to tailor your applications to save costs where it’s practical to do so.

Another strategy to manage international filing costs is to take advantage of convention priority periods, if they apply. For example, if you’ve only recently filed your first trademark application in your home territory, then you have six months from that filing date to file equivalent trade mark applications in other countries, and still retain the same priority date as that home application.

For example, if you were to file an application on 1 June 2020, for a particular trade mark in Australia, then you have until the 1 December 2020 to seek protection for that same trade mark for the same or less goods/services in other countries and claim the 1 June 2020 as your priority date, assuming that was the first time you filed for that particular trade mark. This does not mean your trade mark is protected overseas in those 6 months but gives you time to budget, plan markets and help stagger the costs.

Often we have clients ask for a quote to register a trade mark in many countries at one time, and often they’re quite shocked at the costs. Unfortunately, the government departments do not offer reduced filing fees or discounts so we are limited in how costs can be reduced or how multiple countries could be achieved at a low price. We can, however, offer advice on options or alternatives to manage those costs and stagger them appropriately. We can help figure out priorities in terms of territories, and in terms of core goods or services by territory. This can help our clients figure out where to best spend the money to begin with.

Some costs are unavoidable and we are powerless to change that. Initial filing costs, once you’ve decided which country you want to file in, those initial filing costs are unavoidable. Costs typically blow out where you want to cover many territories. For most businesses this isn’t achievable and isn’t cost effective to do that unless you’re the likes of Coca-Cola. Very few businesses have the budget to do that.

The simplest way of keeping that filing programme within a budget is to say, “Well we can’t file worldwide because it’s not cost effective, and so we’re going to ask you to look at your customer and see where they’re coming from.” And if you’ve only had one or handful of orders from say Iceland over the past five years, then that’s probably not going to be a priority.

Is it possible to get cheaper rates or discounts?

Government trade mark offices don’t do discounts.

The total fees ultimately come down to the countries and number of classes you need and the attorney firm you use, as professional fees may vary. The official fees cannot be avoided. If you want to register your trade mark in a certain number of classes in certain countries, they will apply and will be what the government offices dictate those fees to be. We recommend engaging an experienced trade marks attorney to handle the process for you. Those professional fees will vary from firm to firm.

We have had clients attempt DIY international trade mark registration to avoid the professional fees where things have ended up in a bit of a mess and come to us afterwards to help fix that mess. On those occasions the professional fees to ‘fix’ things have been more than attorney fees would have been to file in the first place. On several occasions it has resulted in the clients needing to re-file international trade marks as the issues could not be remedied without new applications, resulting in having to pay official fees over again. For example, making some sort of error in the owner’s name could be a major problem that cannot necessarily be fixed later on.

We are aware of several businesses offering online filing services offering competitive professional fees. Some are provided by trade marks attorneys, some are not. If you do use a service like this be sure to understand what service you are receiving and who is providing it. Some will not provide any checking, guidance or advice and effectively act as an online DIY service (so, will not necessarily let you know if there are major errors in your application information).

So, how much does it cost?

As this depends on the countries and classes involved, please get in touch and we’d be happy to provide an estimate. Our office provides fixed professional fees for the filing of the application and receiving the relevant correspondence and reporting the same to you so that you know there will not be any additional costs unless you face some sort of objection or opposition.

Our Guide to International Trade Mark Registration is a useful reference point to understanding a bit more about overseas trade mark registration and provides information about the Madrid Protocol, which – for eligible trade mark applicants – can provide for a simpler and some times more cost effective way of achieving registration where multiple countries are required. Simply let us know the countries of interest and we can assist.

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