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I have an online business. Do I need to register a world-wide trade mark?

This is a common question. At the outset, it’s important to understand that it isn’t actually possible to have a single trademark registration that protects your trade mark worldwide, and that’s because trade mark protection is territorial and it’s governed by the different laws and regulations that are in force in the different countries around the world.

In other words, if you want to protect your trade mark in more than one country, then you may need to file more than one trade mark application, and of course the more countries you wish to register your trade mark in, the higher the cost will be. It is important to know which territories you actually require trade mark protection in.

If you have an online business, just because your business is online, doesn’t necessarily mean you need to register your trade mark in every country where internet users might reside, which is essentially everywhere.

For most businesses, that kind of broad protection isn’t required and isn’t practical or cost effective, unless you’re the likes of Google or Amazon. To help businesses decide where they should register their trade marks, we recommend that they consider their business plan (and if you don’t have one, consider making one) and then ask themselves what their businesses are doing now, and what are the likely to be doing moving forwards.

Do you promote your brand in other countries, and if so, which countries? Do you have records of sales and delivery addresses of your customers? Is so, where are they? Where do you see your business in five years time? So where are you now and where will you be? Where do you plan to be in five years time, particularly in terms of where you plan to be promoting your brand.

Would that be in different countries in the coming years, and if so, which countries and what will be the scope of the goods or services and would it be the same as those provided in Australia? Once you’ve ascertained the countries and the goods for those countries that are of relevance to your business, then you can consider how you’re going to protect your trade mark in those other countries, as there are different options available when wishing to register a trade mark internationally.

You can file directly into a foreign country using a national application, which typically requires the services of a trade marks attorney in that country. As you can tell from the name, a national application applies directly to, and will cover, one country. That mode of international filing can be appropriate, if you’re only filing in a single country  or if you wish to protect your trade mark in a country that isn’t a party to certain international agreements that can apply. It can also be appropriate if you wish to protect your trade mark in a country that has very specific filing requirements that set it apart from other countries, such that you almost have to file separately, otherwise you’ll be ending up doing lots of work further down the track to get it into the right form for that particular jurisdiction.

If you’re interested in filing in multiple countries, generally speaking, it’s more practical and cost effective to file what’s called an international application or an international registration. That name is a little confusing because it sounds like it’s blanket international protection, but it actually isn’t.

Rather an international application or international registration enables the applicant to file a single application, governed by the World Intellectual Property Organisation (WIPO) and nominate member countries that are of interest to them. If you have filed a trade mark application in Australia, or registered your trade mark in Australia, you can choose from around 100 countries that are members to the Madrid Protocol and those countries will then separately examine your trade mark application. Effectively, WIPO acts as a central place for filing and handling communication and then your application branches out into each of the countries you have designated.

Whichever option you choose the specific country or countries examine the application according to their own laws. Whilst a lot of countries can be designated in an international registration under the Madrid Protocol, not all countries are available and certain eligibility requirements must be met to utilise that system. Once we know which territories are of interest to you, now or in the coming years, we can have a look at all of the countries that are currently members of the Madrid Protocol and see whether or not an international registration would be suitable and whether it is the most cost effective and suitable method of filing internationally for you.

If it turns out that the international registration through WIPO is a suitable method of filing, then that’s typically our preferred method because it’s usually less costly than filing multiple national applications and it’s also simpler to manage administratively. If you file your international registration then it allows our office in Australia to handle that process for our clients, avoiding the need to engage attorneys in multiple countries in order to file the applications.

If there are no objections raised in examination by the foreign territories, then there’s no need to engage a foreign attorney. That said, if objections are raised then we can engage foreign representation from our network, and that can streamline the process for our clients. Then they only have to deal with us as opposed to multiple agents around the world.

Another benefit of filing an international registration under the Madrid Protocol versus multiple national applications is that you can actually add further countries to your international registration later in time. So say here in 2020, you only believe that the USA and the UK and China will be the territories of interest to your business for the next five years, you might find two years later, actually, you’re also interested in the EU. If you have already filed an international registration through WIPO for USA, UK, China then you can add the EU to that international registration. The EU office will then, at that time, examine the application and issue the results.

Adding a country or jurisdiction in the future doesn’t have the benefit of the original filing date from when you initially filed, but, it’s administratively easier than filing a separate application – and usually less costly.

Finally, it is worth noting that when you file in Australia for the first time, you have a six month window of time to make a decision about which other countries you want to file in where you can claim your Australian filing date for priority purposes (essentially, if you file overseas within six months of filing in Australia those international offices will treat the applications as though filed the same date as in Australia even if filed up to 6 months later) and that really helps plan the territories required and budget accordingly.

Using this six month period also means you can wait and see if your trade mark is approved at least in Australia first. If you have obstacles in Australia, it may impact your overseas plans.

Common myths about online businesses and trade mark registration

It is not un-common that Australian trade mark holders assume that their Australian trade mark covers them for all online business, including where goods or services are sold overseas. Even though your business may be based in Australia this does not mean your Australian trade mark, connected to your Australian business covers international sales.

If you don’t have a registration in a country where you are trading, even if you’ve got one in Australia, you may not be covered. For example, if you’re also selling your goods to customers in the United Kingdom, you could be leaving the door open for an infringement action if you have not registered your trade mark in the UK. If there’s another company in the United Kingdom that has a similar mark, you might be infringing their mark. Your Australian use and registration will not defend against such a claim.

I have an online business that sells everywhere around the world, what do I do?

It is unusual for a business to truly have use of their trade mark in all countries of the world. Brands such as Amazon, Google, McDonald’s would be examples of those that truly promote their brands on a global stage. In that case, they probably do have trade mark protection almost everywhere if not everywhere. These days there are probably a few businesses that use the Amazon platform to sell their goods in many countries, however, may not have the budget to register in each country. What they have to do is make a judgment call and conduct a risk assessment.

It is recommended you look at how much in the way of sales you have to all the different countries. You’ll see, hopefully, a pattern over time of which countries are your key markets and those are the ones you should focus on.

Assessing and limiting risk is good but if you don’t want any risk at all, then limiting the availability of your goods to those markets where you have protection is the best approach. That being said, if you’ve only had a few token sales to a given country, that’s a pretty limited risk exposure because realistically, if there was to be an infringement proceeding, there wouldn’t be much in the way of a claim. There are also some guidelines that suggest if you do have registration in a country (e.g. Australia) your liability for infringement in other countries is somewhat limited – if you hear from someone claiming you are infringing their rights in another country and take appropriate steps, quickly, then they cannot necessarily pursue any monetary claim. These are guidelines, not certain outcomes, but are quite useful when trading online. Often you can take a common sense approach to how many countries you file in and still sell in other countries without being too concerned about the risk.

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