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Registration of Trade Marks under the Madrid Protocol

Whilst there’s no such thing as a global trade mark, many countries are available via the Madrid Protocol

Please note that new countries are constantly becoming members of the Madrid Protocol and accordingly the following list is current at the time of publication.

What is the Madrid Protocol?

The Madrid Protocol is a system administered by the World Intellectual Property Organisation (WIPO) which allows for registration of a single trade mark in nominated member countries.  There is no such thing as a global trade mark, but this centralised system makes it more affordable for applicants to pursue trade mark protection in multiple countries via a single application.

Australia joined the Madrid Protocol in 2001.  Since then, owners of registered trade marks in Australia have been able to extend that trade mark protection into other designated countries – and similarly, applicants who have a trade mark registration in another member country have been able to file an application for protection in Australia.

To be eligible to file an application from Australia through the Australian trade marks office (known as the ‘Office of Origin’), the applicant must be an Australian national and/or be domiciled in Australia.  If the applicant is not an Australian company or national, they must have a real and effective industrial or commercial establishment in Australia.

If you intend making an international application through the Madrid Protocol Trade mark system, it will essentially mirror the details of your Australian application or registration.  The owner must be the same, the trade mark must be identical and the goods/services must either be the same or must be narrower in scope.

It is important to note that any cancellation or restrictions placed on the Australian application or registration will apply to the international registration.

In light of the above, it is crucial that applicants ensure that they’ve done thorough preparation including a Madrid Trade Mark Search and country specific searches before filing via the international system.  Ideally, we recommend that applicants only invest in an international application through the Madrid Protocol Trade mark system once they are reasonably certain that their Australian   is ‘safe’.

Australia is also a member to the Paris Convention which, according to WIPO: ‘applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. This international agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries.’ It was adopted in 1883.

The Paris Convention basically enables priority rights.  Under the convention, if you have previously filed the same trade mark in another country, you are allowed to claim an earlier priority date on your international application.  The proviso is that you need to have filed your international application within six months from the date on which the trade mark was first filed.   In other words, provided your international application/s is/are made within those first six months, it will be regarded by the designated countries as being filed on the date of your basic Australian trade mark application.  It means your trade mark will be given priority over someone else’s application for the same trade mark provided their priority date is later than yours.

The timeframe is strictly limited to a six-month period and extensions are not possible.

If you engage MMW Trademarks to handle your priority international application, we strongly urge you to submit your claim at least four weeks before the six-month timeframe expires so that there is sufficient time to prepare and submit your application. Note, certain territories – particularly when not members to the Madrid Protocol may require a longer period of time to ensure a priority claim can be included in the application.

It is possible to file an international application at any stage after the six-month period has passed, but no priority can be claimed and these will only be examined as at the date of filing.

The cost of filing through the Madrid Protocol

The cost of filing for an international trade mark depends on a number of factors.  These include:

  • the countries being designated
  • the classes of goods/services
  • the colour of a logo mark (ie black and white vs colour)

There is a filing and handling fee, plus there is a fee payable per country.  This fee varies depending on the country.

Our trade marks attorneys can advise on the most cost-effective and suitable solution for your international trade mark application.  Sometimes, it is best to file for trade mark protection through a single application via the Madrid Protocol and in other instances, it is better to file directly with the individual countries you are interested in.  Either way, the Madrid Protocol is a convenient and cost-effective solution for registering and managing trade marks across multiple countries.

MMW Trade marks has extensive experience in international trade mark applications and we have the knowledge and expertise to guide you through the process and achieve the best outcomes at an affordable cost.  Please get in touch with our friendly team to discuss your international application.

Afghanistan African Intellectual Property Organisation (OAPI)
Albania Algeria
Antigua and Barbuda Armenia
Australia Austria
Azerbaijan Bahrain
Belarus Belize
Benelux Bhutan
Bonaire, Sint Eustatius and Saba Bosnia and Herzegovina
Botswana Bhutan
Bonaire, Sint Eustatius and Saba Bosnia and Herzegovina
Botswana Brazil
Brunei Darrusalam Bulgaria
Cabo Verde Cambodia
Canada Chile
China Colombia
Croatia Cuba
Curaçao Cyprus
Czech Republic Denmark
Egypt Estonia
Eswatini European Union
Finland France
Gambia Georgia
Germany Ghana
Greece Guernsey
Hungary Iceland
India Indonesia
Iran (Islamic Republic of) Ireland
Israel Italy
Jamaica Japan
Kazakhstan Kenya
Korea (Democratic People’s Republic of) Korea (Republic of)
Kyrgyzstan Lao People’s Democratic Republic
Latvia Lesotho
Liberia Liechtenstein
Lithuania Madagascar
Malawi Malaysia
Mauritius Mexico
Moldova (Republic of) Monaco
Mongolia Montenegro
Morocco Mozambique
Namibia New Zealand
North Macedonia (The Republic of) Norway
Oman Pakistan
Philippines Poland
Portugal Romania
Russian Federation Rwanda
Samoa San Marino
Sao Tome and Principe Serbia
Sierra Leone Singapore
Sint Maarten (Dutch part) Slovakia
Slovenia Spain
Sudan Sweden
Switzerland Syrian Arab Republic
Tajikistan Thailand
Trinidad and Tobago Tunisia
Turkiye Turkmenistan
UAE Ukraine
United Kingdom United States of America
Uzbekistan Vietnam
Zambia Zimbabwe
Afghanistan African Intellectual Property Organisation (OAPI) Albania Algeria
Antigua and Barbuda Armenia Australia Austria
Azerbaijan Bahrain Belarus Belize
Benelux Bhutan Bonaire, Sint Eustatius and Saba Bosnia and Herzegovina
Botswana Bhutan Bonaire, Sint Eustatius and Saba Bosnia and Herzegovina
Botswana Brazil Brunei Darrusalam Bulgaria
Cabo Verde Cambodia Canada Chile
China Colombia Croatia Cuba
Curaçao Cyprus Czech Republic Denmark
Egypt Estonia Eswatini European Union
Finland France Gambia Georgia
Germany Ghana Greece Guernsey
Hungary Iceland India Indonesia
Iran (Islamic Republic of) Ireland Israel Italy
Jamaica Japan Kazakhstan Kenya
Korea (Democratic People’s Republic of) Korea (Republic of) Kyrgyzstan Lao People’s Democratic Republic
Latvia Lesotho Liberia Liechtenstein
Lithuania Madagascar Malawi Malaysia
Mauritius Mexico Moldova (Republic of) Monaco
Mongolia Montenegro Morocco Mozambique
Namibia New Zealand North Macedonia (The Republic of) Norway
Oman Pakistan Philippines Poland
Portugal Romania Russian Federation Rwanda
Samoa San Marino Sao Tome and Principe Serbia
Sierra Leone Singapore Sint Maarten (Dutch part) Slovakia
Slovenia Spain Sudan Sweden
Switzerland Syrian Arab Republic Tajikistan Thailand
Trinidad and Tobago Tunisia Turkiye Turkmenistan
UAE Ukraine United Kingdom United States of America
Uzbekistan Vietnam Zambia Zimbabwe

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