There is no such thing as a worldwide trademark…
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.
Who is entitled to file?
When filing from Australia and through the Australian trademarks 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 trademark or trademarks, in the same person/s name/s.
It is very important to note that International Trademarks filed via the Madrid Protocol are dependent on this basic application for the first five years. Any cancellation or restriction that the basic Australian trademark may experience will affect the International Registration to the same degree.
If you have interest in protecting your trademark outside of Australia, please contact us for a quote. Please include your Australian trademark number (if available) or a list of the goods/services you intend to ‘brand’ with your trademark, and specify the countries of interest.