If you’re looking to expand your business, it’s important to think about how you can protect your intellectual property overseas. Registering intellectual property rights in Australia doesn’t give you the same rights overseas. So there’s always a risk that an overseas party may copy your trade mark or register your design. This may result in damage to your brand, lost sales, or costly legal disputes. To help avoid this from happening, we set out some steps so you can legally protect your intellectual property overseas.
Register Your Trade Marks
There are two ways you can protect your trade marks internationally. You can do so either by:
- a country direct application; or
- the Madrid Protocol.
If protection is granted in a certain country, your trade mark will have the same protection as a nationally-registered trade mark in that country.
Country Direct Applications
You can file a trade mark protection application directly to each country in which you seek protection. You need to file separate applications through the systems of each individual country.
You can also file an application through the Madrid Protocol, an international trade marks registration system of which Australia is a member. This can be a simpler and cheaper option, as it allows you to file a single application for an initial ten-year protection in multiple countries (including the US, UK, EU, and China). However, not all countries are members of the Madrid Protocol. So you may need to make country-direct applications for places such as Canada and Hong Kong. You can only apply through the Madrid Protocol if you’ve already made an application or have a registered trade mark in Australia.
Before submitting an application, check that there aren’t any similar existing trade marks. You can do this by searching the trade mark records in relevant countries, as well as the Romarin database.
Defend Your Designs
You can protect your designs internationally by:
- applying for protection directly in each of your target countries; or
- applying for Community Design Registration (CDR).
A CDR application allows you to apply for registration in all EU member countries with a single application, as long as your application relates to a community design. A community design protects a product’s appearance and must be intrinsically linked to a product. It includes industrial or handicraft items such as packaging and graphic symbols. CDR protection lasts for up to 25 years, subject to renewal every five years.
You must apply for international design protection within six months of applying in Australia. If you file your design internationally after the six month period, you might not be able to register your design because it may no longer be new.
Make sure you keep your design confidential until it has legal protection. In situations where it’s necessary to disclose details of your design, such as in discussions with potential overseas manufacturers, have a Non-Disclosure Agreement in place.
Protect Your Patents
There are two ways you can patent your product internationally if you’re planning to export:
- applying for patents directly in each country you want protection; or
- applying through the Patent Cooperation Treaty (PCT), which
is administered by the World Intellectual Property Organization (WIPO).
The PCT lets you file a single patent application for protection in multiple countries. You can lodge the application on the basis of your Australian application if you do so within 12 months of your Australian application.
Applying through the PCT has the added of advantage of allowing you to defer your national patent registration costs for up to 30 months for most countries, giving you additional time to assess the value of your invention and its export potential before committing to the high costs involved.
You can protect your intellectual property beyond Australian shores by filing applications with each target country’s registration system. Applying for overseas protection can be very costly, and navigating all the available systems can be riddled with complications. Therefore, it is beneficial to obtain professional legal advice before proceeding with any applications. If you have any questions or need assistance in protecting your intellectual property overseas, get in touch with one of LegalVision’s intellectual property lawyers on 1300 544 755.
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