Are you looking to commercialise your Australian product to the global market? International expansion is an important decision for any business looking to go global. It is important to consider the legal risks and must-dos to ensure that you can smoothly expand your business and establish yourself overseas.

There are two main ways that a product is manufactured and commercialised internationally:

  1. Keeping your manufacturing and selling rights in Australian and providing a license to overseas partners to commercialise, manufacture and sell the product overseas; or
  2. Retaining control and outsourcing manufacturing and selling to overseas employees but remain ultimate control in Australia.

In this article, we will consider Option 2, where you maintain control of your business and opening up overseas.  

As you are expanding your business overseas it is often best practice to set up a company in the country you are expanding to.  This new company can be controlled by your Australian Parent company.

International IP Protection

If you are an established Australian business or newly emerging business, you should protect your IP as you launch your brand internationally.  It is key to identifying the markets where your brand will be emerging and either file direct to these countries or take advantage of multiple applications afforded to Australians by international treaties and agreements.

If you already have IP protection in Australia for your brand, you will need to register it internationally.  If you have a patent, design registration or trade mark registered in Australia, domestic protection does not afford the same rights as if you had IP protection internationally.  You will need to register your trade mark and patent internationally for protection to be afforded to your business.  For instance not protecting your brand with a patent or trademark to the country your plan on exporting to will create a potential for infringement of your brand on competitors, you may be illegally using the registered symbol and you will not have brand protection.

IP Holding Company

As your business is expanding it is often best practice to have an IP holding company that owns will hold all your business’ Intellectual Property.  An IP Holding will own and control your business’ intellectual property portfolio this will include trademarks, patents, copyrights, designs and unpatented technology of your business and brand profile.  The IP holding company (licensor) will own the IP and license it to the subsidiaries ensuring IP assets are protected from third parties that interact with the operating company and licensee.   The IP Holding Company will license your goods to international subsidiaries that you have set up.  

Manufacturing Your Goods to Expand

If you currently run a successful physical and online store around Australia, it is important to consider the manufacturing and distribution capabilities of your brand.

Consider if you have enough product to export and supply the emerging markets? And Where is your product manufactured? These questions will need to be answered and determined through the process of opening up overseas.

Local Country Checklist

Further considerations you will need to make in line with the local legislation of where you open your business will be.

  • Employment Contracts: When establishing your valuable business employees will be able to build the brand overseas.
  • Leasing shop fronts
  • Advertising and Compliance
  • Understand consumer law and guarantees.
  • See a local Tax Accountant and sort out your finances.

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If you plan to expand your brand internationally, get in touch with LegalVision’s business lawyers to find out the legal documents you require.

Sophie Glover

Next Steps

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