As a business owner, you should protect your trade marks internationally if you intend to trade outside Australia. You can achieve this by filing a trade mark application through the Madrid Protocol. The Madrid Protocol is an international treaty that provides the basis for an international registration system for intellectual property. This article will provide further details on filing a trade mark application through the Madrid Protocol.
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What is the Madrid Protocol?
The Madrid Protocol filing system is a convenient and cost-effective way to register and manage trade marks worldwide. As of 2022, applicants can file a single application and apply for protection in up to 126 countries. They can then renew and expand the reach of their trade mark protection through a centralised system. This means you do not have to coordinate between separate country applications, which may be costly and burdensome.
The World Intellectual Property Organization (WIPO) oversees applications through the Madrid Protocol. However, Australian applicants can commence their application through IP Australia. Not all countries are signatories to the Madrid Protocol, so there may be particular countries of interest to you that you cannot include in your international registration via this system. However, if you wish to file a trade mark application in a non-member country, you can file directly with that country’s intellectual property office.
In addition to including specific countries in your Madrid Protocol international application, there are also regional organisations you can designate, as set out below.
| Region | Countries Included | Designation |
| Benelux | Belgium, The Netherlands, and Luxembourg | These countries are treated as one region under the Madrid Protocol. |
| European Union | All member states of the European Union (including Benelux countries) | The countries belonging to the EU can either be designated separately or you can select the entire European Union for protection in all countries. |
| African Intellectual Property Organisation (OAPI) | Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Côte d’Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo. | It is impossible to designate the member countries of OAPI separately, nor can you file a direct national application in these member countries. Any protection for any one of the members of the OAPI must be made under the OAPI as a collective. |
How Can I Apply Through the Madrid Protocol?
To be eligible to register through the Madrid Protocol, you must first have an existing trade mark or a pending application for your desired trade mark in at least one domestic jurisdiction. Usually, this will be your home country or ‘office of origin’. This means that Australian applicants generally cannot register a trade mark via the Madrid Protocol without applying in Australia first.
It is important to remember that your international trade mark registration depends on your Australian trade mark (the ‘basic trade mark’). This dependency remains for five years. This means that your international trade marks will be affected if your basic trade mark application has not:
- been approved;
- received opposition; or
- been cancelled.
Additionally, it would help if you considered renewal deadlines for your basic and international trade marks. IP Australia manages your basic trade mark renewals, and WIPO manages your international trade mark renewals. You must renew your international registration in time to avoid losing protection in all the designated countries under the Madrid Protocol application.
You can lodge these applications through the WIPO portal through IP Australia. WIPO then assesses the application for formality requirements. Furthermore, upon preliminary review by WIPO, your application is sent to each designated country for formal examination.
Each designated member country then examines the application according to their domestic trade mark laws. Therefore, while Madrid Protocol allows you to apply in many countries, there needs to be a successful trade mark registration in each country. The examination procedure and the overall timeline to achieve registration may vary across different jurisdictions.
Continue reading this article below the formSubsequent Designations
Suppose you obtain trade mark registration via the Madrid Protocol system but wish to add other countries later. In this case, you can file ‘subsequent designation’ applications under the Madrid Protocol. Again, you can do this through WIPO.
Key Takeaways
The trade mark application process can be complex, especially if you are interested in registering your trade mark overseas. The Madrid Protocol aims to simplify the process. However, if your Australian trade mark faces issues, your international trade mark may as well due to the ‘dependency period’.
If you have any questions regarding trade mark registration in Australia, our experienced trade mark lawyers can assist 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
Your international trade mark registration depends on your basic trade mark. This dependency remains for five years. Therefore, your international trade marks will be affected if your basic trade mark application has yet to be approved, received opposition or is cancelled.
If you file an application and wish to add other countries later, you can file ‘subsequent designation’ applications under the Madrid Protocol. You can do this through the World Intellectual Property Organization (WIPO).
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