International Trade Marks Registration

No.  A trade mark that has been registered with IP Australia only offers legal protections for your brand in Australia.  There is no such thing as ‘automatic brand protection’ in foreign countries for trade marks that have been registered in Australia.

No, there’s no such thing as a worldwide trade mark.  You will need to register your trade mark in each of the countries or regions in which you intend trading.

If you file a national application into another country the details do not have to ‘match’ your Australian one. However, if you file an international application under the Madrid Protocol the details of your international application have to mirror the details of your Australian trade mark application including the categories of goods/services you have selected (or a limited version thereof).

It’s therefore imperative to ensure, when filing under the Madrid Protocol, that your basic Australian application is correct and that it covers the full spectrum of goods and services you require – or which you intend to expand into – before filing your international trade mark application.

There are two ways of securing legal protections for your brand outside of Australia:

1. Filing separate trade mark applications in individual countries
2. Filing a single trade mark application via the Madrid Protocol which is administered by the World Intellectual Property Organisation (WIPO)

The Paris Convention is an international agreement which allows parties that file a trade mark application in one member country a period of six months for them to file an application for the same trade mark in other signatory countries.

This means that if you file a trade mark in Australia first, you can claim that priority date in your international application/s to one or more of the Paris Convention member countries for up to six months.  This can be beneficial in terms of budgeting as you can defer the cost of your overseas application without prejudicing your rights at the priority date.

There are currently more than 120 member countries of the Madrid Protocol, making it a convenient and cost-effective way to gain international trade mark protection multiple countries through a single application.  However, it is important to note that filing through this international treaty doesn’t automatically give you rights in your selected countries.  WIPO will first look at your application and then refer it to each contracting country for validation.

It is important to ascertain whether you are eligible to file through the Madrid Protocol before investing any time or money in your international trade mark application.

The method that you choose for securing international brand protections will depend on the unique circumstances of your business – and it is always advisable to seek professional advice from a qualified trade marks attorney before proceeding as it is very difficult and sometimes impossible, to make changes after the fact.

It is generally a little bit quicker to file overseas trade mark applications directly with individual countries.  This can be a good option if you need to urgently secure international protection for your IP.

Typically, international trade marks filed using the Madrid Protocol will be examined within 12-18 months in each of the designated countries.  A few will be quicker but a few may take longer.

However, the speed of the application process is only one factor to consider.  It’s important to take a strategic approach to international trade mark registration to ensure that you are getting the appropriate coverage both now and in the future.

The Madrid Protocol requires applicants to first have at least an application in their own country before applying for international trade mark registration.  This type of international registration is dependent on the national/basic trade mark for 5 years so it is wise, where practical, to ensure the basic trade mark is, at the very least, approved before filing under the Madrid Protocol. If your national application lapses or is cancelled in those first 5 years, this will cancel the international registration and require the applicant to transform the application into national rights (or allow the cancellation).

However, there’s no prerequisite for a trader to have a registered trade mark in Australia before applying for trade mark rights in an individual foreign jurisdiction.

Yes, it is possible to add other countries by filing subsequent designations if you want to broaden your international trade mark registration.  This is good news for business owners who may be undecided about their future international expansion plans, but who would like to ensure the appropriate legal protections if and when the time comes.

An international registration under the Madrid Protocol is valid for 10 years, at which time you can renew your rights in all of the countries which have gained protection under your international registration, or, you can elect to renew only a few.

Most foreign countries have the same validity period for trade mark rights as Australia, ie 10 years, with the option for renewal.  However, each country has its own trade mark laws, so it is important to maintain an accurate inventory of your international IP assets and audit them regularly to ensure you don’t miss any deadlines.

It is certainly advisable to do a comprehensive international trade mark search before filing any application in order to confirm the availability of your unique brand identifier.

An experienced trade marks attorney will have relationships with trusted agents in other countries who can ensure that comprehensive searches are done.

Many small business owners choose to register their unique brand identifiers overseas for the peace-of-mind that it gives them in terms of brand protection.  First and foremost, registering your trade mark in countries in which you promote your goods/services ensures you have the right to use that trade mark.

An international trade mark also means that you may be able to prevent other traders from making, using, selling or promoting the same sort of product or service under a confusingly similar brand – and in today’s connected world where cross-border trading is increasing, international trade mark registration can be a prudent decision for businesses of all sizes.

If you’re unsure of whether international trade mark registration is relevant for your business, you should get expert advice from a trade marks attorney.

It is possible to manage your own applications, but it should be noted that trade mark law is dynamic and that different countries have different rules and regulations.  The application processes, procedures and requirements of the different countries also change fairly frequently, and mistakes or delays in an application can be costly – and sometimes impossible – to rectify.

It’s therefore often more cost-effective, more efficient and more reliable to engage an experienced legal professional who is familiar with international trade mark protection and enforcement to handle your international trade mark application and to manage your IP portfolio.