International Trade Marks Registration

The rapid rise of digital communications and ecommerce has opened up a world of opportunity for Australian businesses wishing to expand overseas.  At the same time, this has brought the question of international trade marks into sharp focus.

An international trade mark for specific overseas jurisdictions is the best way to ensure comprehensive legal protection for a brand.

MMW Trademark Services can assist you with expert advice on international trade mark registration.  Our trade marks attorneys are widely experienced in this field and can help you achieve international protection for your trade mark in the most efficient and cost-effective way possible.

For advice or a quote, please call us on 03 8288 1432.

The international business landscape is highly competitive and there are many pitfalls for the unwary and under-prepared.  We understand the critical need for businesses to safeguard their valuable IP assets when operating outside Australia – and we can help you achieve this.

There is no such thing as a worldwide trade mark…

There are essentially two ways to secure protection of a trade mark outside of Australia.

  1. The filing of national applications to each country of interest. This will usually require the engagement of an appropriate agent/attorney in each country chosen; or
  2. The filing of a single application seeking international registration under the Madrid Protocol and designating the other ‘member’ countries of interest. This application must be based on your national (Australian) application when filing from Australia.

Where possible and appropriate, the Madrid Protocol application is simplest and most cost effective. Australia joined the Madrid Protocol in 2001 and since then it has been possible to file a single application through the treaty and simply designate the other protocol members you wish to extend your trade mark registration into. Likewise, since 2001 applicants who have a national application in another protocol member country may file a single application designating Australia.

There are set criteria in place to determine whether you are eligible to file through this system, and these should be carefully considered before investing any time and funds.

Any international trade mark application – regardless of the path you take – can be a lengthy and sometimes costly process.  Getting expert, professional advice is advantageous.   Our trade marks attorneys, have extensive experience in international trade mark registration and a able to guide you on the best way forward.

Who is entitled to file?

When filing from Australia and through the Australian Trade Marks office (known as the Office of Origin) the applicant must:

  • Be an Australian national; or
  • Be domiciled in Australia; or
  • Have a real and effective industrial or commercial establishment in Australia.

(NB: If the applicant’s address is not in Australia they will be asked to provide the address details of their establishment in Australia)

The Basic Application

When Australia’s government office is acting as the Office of Origin, the international application must be based on an Australian trade mark or trade marks, in the same person/s name/s.

It is very important to note that international trade marks filed via the Madrid Protocol are dependent on this basic application for the first five years. Any cancellation or restriction that the basic Australian trade mark may experience will affect the International Registration to the same degree.

The Madrid Protocol is a convenient and cost-effective solution for international trade mark registration and management.  It is possible to apply for trade mark protection in over 110 countries around the world in one single application (with more countries added over time), and the centralised system makes it easy and economical for business owners to amend, renew and expand their global trademark portfolio.  It is a much easier and more affordable approach than having to file multiple applications in each country or jurisdiction where international trade mark registration is sought.

It is also possible to apply for trade mark protection directly to individual countries, and it is worth discussing your aims and objectives with an experienced trade marks attorney to determine the best way forward.

MMW Trademark Services has assisted many clients from diverse industries in Australia to file for international trade mark registration.  Our team stays up-to-date with the ever-changing parameters of the Madrid Protocol so we’re able to provide qualified, expert advice every step of the way.

If you are interested in protecting your trade mark outside of Australia, you’re welcome to contact us for a friendly, obligation-free consultation and a quote.  Please have your Australian trade mark number handy (if available) or a list of the goods/services you intend to ‘brand’ with your trade mark, as well as a list of countries you’re interested in.

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