There are essentially two ways to secure protection of a trademark outside of Australia.
- The filing of national applications to each country of interest. This will usually require the engagement of an appropriate agent/attorney in each particular country chosen; or
- The filing of a single application seeking international registration through 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 trademark 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, which should be carefully considered before investing the time and funds in using the system.