If you are planning to expand your trade mark protection internationally, it is worthwhile to think about your broader business goals and target markets. You may only be interested in selling your goods and services in one or two countries, or perhaps you have global expansion plans. This may influence whether you file trade mark applications directly with each country’s trade mark office of interest to you. Alternatively, you may group together multiple countries in one Madrid Protocol application.
Benefits of Filing Directly
1. Faster
The trade mark filing and examination process length differ from country to country. Some trade mark offices, like in the UK, can review applications within a couple of months after filing. Meanwhile, in others, such as Canada, your application is unlikely to be examined for approximately two to three years. Either way, starting the filing process sooner rather than later is a good idea. This allows your trade mark to progress to registration faster.
2. No ‘Base’ Application Necessary
You can file a direct application to any country of interest without a registration or an application on foot in your ‘base’ country. So, suppose you operate your business in Australia, but your client base is predominantly in the UK. Accordingly, you can apply directly to the UK without first registering your trade mark in Australia. You also do not need to live in, or be a national of, a particular country to apply.
3. Cheaper to Target Only One or Two Countries
Suppose you wish to register your trade mark in one or two countries. If so, it can be cheaper to file national applications directly with those countries’ trade mark offices. This will save you from paying a ‘base’ Madrid Protocol application fee on top of the filing fees.
4. Not Subject to Centralised Attack
The success of direct national applications is independent of one another. They do not hinge on the successful acceptance or registration of a centralised ‘base’ application. Each application can also include broader or narrower claims in different classes in each country and are not limited to one country’s specifications.
Disadvantages of Filing Directly
1. Expensive
Conversely, it becomes expensive and cost ineffective to file direct applications in multiple countries. The more countries you file in, the greater the filing fees payable to each trade mark office. In this situation, filing via the Madrid Protocol can be cheaper to reduce the filing fees you may pay in total.
2. Need to Have a Local Representative
In addition to filing fees, you will need to meet the fees of a local representative or attorney based in each country to file your application on your behalf.
3. May Need to File a Translation
If you are seeking to file a trade mark application in a language that does not recognise English descriptions of your goods and services, you may need to translate your application before filing. Again, this will usually involve formally engaging a translator to perform this service to ensure you are accurately representing your goods and services, further increasing your costs.
This guide will help you expand your successful franchise overseas, with a clear roadmap, key steps and traps to avoid.
Key Takeaways
Ultimately, if you know you only wish to register your trade mark in one country, it can be cheaper and faster to file a national application directly with that country’s trade mark office. You can file a direct application to any country of interest without an application or registration in your base country. Thus, if you operate your business in Australia, but your client base is in the USA, you can apply directly to register your trade mark in the USA without having a registered or pending trade mark in Australia. However, it is helpful to consider your goals and where you may like to offer your goods or services within the next few years.
It is best to speak to a trade mark lawyer to help you navigate international filing to determine which filing option is most suitable for you. Our experienced intellectual property lawyers can help as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A trade mark is a sign that distinguishes your goods and services from those of other traders. A trade mark can be a letter, number, word, business name, phrase, sound, smell, shape, logo, picture or aspect of packaging.
A Madrid Protocol application provides a mechanism whereby a trademark owner who has an existing trademark application or registration may obtain an international registration for their trademark from the WIPO, which extends to its member jurisdictions.
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