Is Your Canadian Trade Mark Valid in Australia? 

In Short

• Canadian trade mark protection does not extend to Australia automatically, but your mark may be considered unregistered.

• You can protect your mark in Australia by using the Madrid Protocol or filing directly with IP Australia.

• Filing directly may be faster and more cost-effective if you only need protection in Australia.

Tips for Businesses

To secure full protection for your Canadian trade mark in Australia, consider either filing through the Madrid Protocol or submitting a direct application to IP Australia. If you have filed in Canada within the last six months, you can claim the priority date when applying in Australia. Always work with a local IP lawyer for guidance.

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Table of Contents

• Unregistered Trade Marks
• The Madrid Protocol
• Filing a Direct Australian Application
• Key Takeaways
• Frequently Asked Questions

Trade mark protections operate on a national basis. This means that a registered trade mark in Canada is not considered a registered trade mark in Australia. However, this does not mean Australian Law does not recognise your trade mark. Your mark may still be recognised as an unregistered trade mark in Australia. This article explains what you need to know about the validity and protection of your Canadian trade mark in Australia.

Unregistered Trade Marks

There are many benefits to trade mark registration, including protection, enforcement and exclusivity. There are still ways to protect your unregistered trade mark rights, such as with a claim of misleading and deceptive conduct or ‘passing off’. However, such claims can be difficult to establish and require evidence of reputation. Trade mark registration provides greater rights in addition to the protection you receive from using an unregistered trade mark.

The Madrid Protocol

The Madrid Protocol, a multilateral treaty, serves as the primary system for seeking international trade mark protection. To use the Madrid Protocol, you require two things:

• an existing trade mark application or registration in a country that is party to the Madrid Protocol, and;
• the country you’re seeking to register in must also be part of the Madrid Protocol.

As Australia and Canada are both parties to the Madrid Protocol, you can use this system to seek an Australian trade mark registration. This strategy can simplify the management of international trade marks. 

Filing under the Madrid Protocol based on a Canadian trademark application or registration and designating Australia links your Canadian and Australian registrations. Depending on the status of your Canadian trade mark registration, this can potentially leave your mark vulnerable. There is a dependency period when using the Madrid Protocol. If you register through the Madrid Protocol with your Canadian mark and cancel or remove the application during this period, it will affect your international trademark, including your Australian registration

Depending on when your Canadian trade mark was filed, an additional benefit could be that the Madrid Protocol will allow you to claim an earlier priority date. The priority date is the date your trademark is considered to have been filed in a specific country. If you have applied for your Canadian trademark within the last six months, you can opt to claim the earlier priority date of your Canadian trademark when filing a trademark application in Australia. This will provide you with better protection as IP Australia will view your application more favourably than other applications with a priority date after yours. 

Filing a Direct Australian Application

Filing a trade mark application directly in Australia does not require a base application. However, filing a direct application may require you to engage a lawyer or attorney to assist you with filing in that country, and the law firm that assisted with your Canadian registration may not be able to represent you when filing within Australia. 

If you are seeking to file an application in Australia only and not in other countries, it may be more cost-effective to file directly as opposed to using the Madrid Protocol. Filing directly is also generally a lot quicker than filing through the Madrid Protocol.

Filing directly in Australia does not leave your application vulnerable to your Canadian trade mark. As the marks are considered separate, any legal issues with your Canadian application or registration will not affect your Australian application. It can, therefore, be useful to apply directly if you anticipate issues with your Canadian application. 

Key Takeaways

Trade marks are registered on a national basis, so a Canadian registration is not valid in Australia. However, using an unregistered trade mark in Australia still offers some benefits. To obtain registered protection in Australia, you can either file directly with IP Australia or use the Madrid Protocol. If you’re only interested in trade mark protection in Australia, filing directly through a local law firm may be more cost-effective. For multiple countries, the Madrid Protocol could be advantageous. It’s best to consult an experienced IP lawyer to achieve the strongest protection possible for your situation.

If you need assistance achieving the best protection for your brand, our experienced intellectual property lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions

Can I use my Canadian trade mark in Australia without registering it?

Yes, you can use your Canadian trade mark in Australia without registering it. However, it will only have limited protection as an unregistered trade mark. For comprehensive legal protection, it’s advisable to register your mark in Australia.

How long does it take to register a trade mark in Australia?

The trade mark registration process in Australia typically takes about 7-8 months, provided there are no objections or oppositions to your application. However, this timeframe can vary depending on the specific circumstances of your application and any issues that may arise during the examination process.