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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Real People, Real Reviews

Mark My Words Trademark Services Pty Ltd
Based on 33 reviews
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We've been clients of Mark My Words for quite a few years now, and not once have I ever doubted that my business is in the very best hands when it comes to handling our IP with trademarks in Australia and throughout the world. Jacqui has expertly guided us through a number of trademark purchases that were straightforward, as well quite a few other instances where we've had to overcome objections, negotiate trademark conflicts, and defending our own trademarks. The communication is perfect and the team always goes above and beyond to make sure we understand our options and possible costs before making any decisions. I highly recommend Mark My Words to any small business needing help with trademarks.
My company, Weyo, invested significant time and money in developing its brand identity so it only made sense to ensure Weyo was a protected trade mark. Mark My Words have been our first and only choice for assisting with our IP and trade mark needs across the world. This was particularly important as Weyo’s first launch was a collaboration with the Wiggles followed closely by collabs with Sesame Workshop and Oddbods so we needed to be sure everything was in place. Jacqui and her team deliver every time. 10 out of 10!!!
Jacqui has been a trusted external advisor to Funlab. Through our expansive and rapid domestic and international journey Jacqui has been a consistent and constant source of counsel. Her professional, proactive and wholesome approach to IP has been welcomed for many years. Thankyou.
Brooke and Jacqui were extremely helpful with a less than straight forward IP matter my company had to overcome. They were really great in keeping me informed of the process as it progressed and we achieved the best outcome.
Mark My Words were the perfect solution to my Trademark registration needs. They have been so professional and thoughtful along the journey, providing me regular updates and a streamlined service. I filled out a few details and they took over from there with no glitches and a wonderful result! I now have a trademarked writing business in Australia and I plan on protecting myself in other countries too. I wouldn’t go anywhere else. Thank you to the team for looking after HeartWriting® Workshops Australia!
Jaqui and staff at MMW have been excellent and very professional. I started with a large company who grossly overcharged and failed to do the necessary work. Still paying them off by the way! Then I found Jaqui and staff who went out of their way to assist for reasonable charges Go with a smaller company and get personalised service like I did. They go out of their way to offer advice at reasonable fees
Wonderful team, with great knowledge and experience in their work.They provide super quick, comprehensive responses to my questions and offer kind advice, regardless of the nature of the job. Such a great team with wise management.they are true professionals.
Our experience with Mark My Words has been excellent. We worked with Jacqui Pryor on US trademark infringement issues with no charge for the email consultation. Jacqui Pryor held my hand throughout the process and walked me through the steps necessary. I am very happy with the effort Jacqui Pryor made and the quality of the work. Her advice is always on point. She was always available and happy to answer any questions which is very helpful in the complex world of trademark infringement. Will continue to use Mark My Words for future IP activities. I would recommend Jacqui Pryor for anyone chasing deep trademark infringement issues.
Best of the best!I wanted to express my heartfelt appreciation to Jacqui L Pryor for her invaluable assistance with my challenging trademark case. Thanks to her expertise, I successfully secured my trademark. I highly recommend Jacqui for her exceptional thoroughness, intelligence, and skill in navigating complex legal matters. 5 stars ⭐️⭐️⭐️⭐️⭐️
Mark My Words have been excellent at getting our logo approved and communicated all the way through the process. Thanks so much. It turned out to be much easier than I had thought it would be due to you guys!
Mark My Words was a game-changer for my business. Being a business owner, it's always a challenge to find the right companies to work with. From the get-go, they grasped exactly what we needed and understood our challenges. Their efficiency and advice was spot-on, and I felt completely secure in their hands. Needless to say, I'm continuing to work with them.
I needed a bit of straightforward advice for my small business, as I wasn't sure if I needed to apply for a trade mark or whether there would be an infringement. Jacqui replied quickly, thoroughly and cleared everything up, with no charge for the email consultation. I'll definitely be back if I need more help in future.
Always friendly and helpful, MMW make the trademarking process really clear and easy.
Jacqui has been amazing in terms of advice and support when considering trademark issues in my business. I felt empowered to make informed decisions and reassured by her knowledge and professionalism. I wouldn't hesitate to engage her services again in the future. Very encouraging, quick to respond and highly professional. Many thanks Jacqui.
I have been using Mark My Words since 2011.They have taken care of my trade marks and any issues that have arisen over the years and there have been a few.Always very professional and reliable. highly recommend.
Very helpful in navigating all the requirements and answering any questions, making you feel comfortable and confident with the process. Would highly recommend!
Extremely professional service and advice, a very pleasant collaboration, which ultimately led me to successfully obtain approval in what I initially thought was an impossible trademark application process. Special thanks to Ms. Ma.
We tried to register our trademark ourselves and put it in the too hard basket after numerous rejections. We then got on to Jacqui Pryor at Mark My Words and couldn't have been happier with the ease of the process and Jacqui's clear communication style, keeping us informed and stepping us through the process to a successful registration. Couldn't recommend highly enough.
Highly recommended for their exceptional service - consistently professional from beginning to end.
The team at Mark My Words made a complex process extremely simple. Their communication was excellent throughout the process
The staff and Mark My Words Trademark Services were very helpful and always available to clarify any issues.
Great service. Highly recommended to anyone needing trademark legal services.
Jacqui and her team made the whole process so easy and efficient, especially being a busy business owner - it saved me so much time!
So good having Mark My Words handing our trademarking journey. Outstanding service at every stage of the process. Highly recommended!
Amazing service, highly recommended!
Mark My Words have processed the trademark application for my online business and social enterprise I'm Plastic Free. They are very accurate, precise, and very knowledgeable about trademarks. I'll definitely recommend them to any business that wants to protect its IPs.
I have just received my fully trademarked brand; thank you to Mark My Words Trademark Services for your seamless, informative and professional service. You have made a seemingly tough task very easy to deal with,
After months and months of dealings with a previous solicitor over trademarking, Jacqui literally got results in a matter of days.Jacqui walked me through the whole process via email, with very simple explanations and steps. I gained a world of legal knowledge from Jacqui.I would absolutely recommend Jacqui and her team, and will be using her again in the future!
Excellent service for a great price!
We've used MMW extensively across a broad range of trade mark applications in dozens of jurisdictions. The advice has been nothing but correct, actionable and timely. I couldn't encourage using MMWs services more. They are fantastic, reliable and a great addition to a busy in-house legal team.
Thank you for an all round great service,Most pleasant professionals We’ve come across
After weeks of self-directed research into IP and how to best protect myself, I only became more and more overwhelmed and unsure of where to start. After reaching out to Jacqui and the team at MMW, my queries were answered promptly and comprehensively. If it wasn't for MMW I would have wasted money on IP that wasn't registrable or helpful in protecting my brand. Thanks to their skill set and wide range of IP knowledge I could effectively protect my brand now, and for the future.
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