Enforcing your trade mark overseas can be a costly and complicated matter, and it will vary depending on which country you are looking to enforce it in. There is no universal trade mark. Hence, you will need to register your trade mark separately in each country you hope to run your business in. Below we set out some of the most common countries where Australian businesses register their trade marks and the processes and issues you should watch out for.
Trade Marks in the EU
It is possible to register your trade mark across the European Union or to do so only in select countries. This is a more expensive process than doing so in Australia and should be taken into account when considering whether or not to do so.
Trade mark registration is governed by the Office for Harmonization of the Internal Market (OHIM). Businesses can apply for a national trade mark for particular countries, or a Community Trade Mark (CTM) which covers all EU states. Note that you may only assign, cancel or enforce your trade mark in respect of the type it was registered as, e.g. if you registered a CTM, you might only assign or cancel it in respect of the whole EU.
There may be more specific restrictions on your trade mark registration depending on the countries that you wish to file in, and the process can be quite complicated.
Trade Marks in the USA
The USA has the most similar trade mark process to Australia. Trade marks are registered through the United States Patent and Trade Mark Office (USPTO), and all trade mark applications can be filed electronically.
The USA follows a first to use rule for registering trade marks, which means that the first person to use a mark will have superior rights to others. Note that in general; applicants are required to provide specific descriptions of the mark that is being sought.
Like Australia, trade mark protection in the USA extends to 3D shapes, sounds and smells. Trade mark registration can be removed if they are not used for three to five consecutive years.
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Trade Marks in China
Registering a trade mark in China is a slow and complex process, and will cost more than Australian trade marking. In China, trade mark registration follows a first to file rule, which means that the first person to file the application has priority, even over prior user by another business. If you would like to file at trade mark in China, we recommend that you do so as soon as possible.
If you would like to file for trade mark registration in China, you will need a residential or business address in China. Otherwise, you must file applications through a Chinese agent or attorney.
Trade marks in China are registered with the China Trade Mark Office, where all documents filed must be submitted in Chinese. You should take into account translation fees when considering filing for a trade mark.
Unlike Australian trade marks, while 3D shapes and colour combinations can be protected under trade marks in China, sounds and smells are not yet registrable.
Finally, like the USA, trade mark registrations may be removed if they are not used for three years or more after registration.
Trade Mark Overseas
Trade mark registration in overseas countries can be a complex and costly matter. It is recommended that you talk to an IP lawyer to determine if overseas registration is necessary and to ensure you follow the appropriate application procedures.
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