How Can I Protect My Intellectual Property Overseas?

An important part of brand protection is understanding where you have protection and where you do not. For example, an Australian trade mark or patent application will not protect your intellectual property overseas. You may be content with protecting your brand in Australia only. However, international markets: 

• are often more profitable;
• have larger customer bases; and 
• have a higher potential for growth. 

This is particularly relevant for products that you can sell on global platforms. Below is a practical guide on how to register and protect your IP assets globally.

Doing Your Homework

Trade Marks

If you are just starting out as a business, we recommend reviewing the legal considerations of creating a brand. This will help you to understand why it is important to make your brand distinctive. Essentially, a distinctive brand is: 

• able to distinguish your goods and services from those of other traders (i.e. not a generic or descriptive name, like ‘Fish & Chips Australia’); and
• not the same or similar to other business names in the same or similar industries (i.e. not a name that will cause consumer confusion between another brand and yours. For example, you should avoid the name ‘Smith’s Fish & Chips’ if a competing business is already using that name).

To understand if your brand is available in a particular market, it often helps to conduct due diligence in the markets you intend to eventually enter. This could mean searching company databases, trade mark databases, phone books, the internet, domain names and social media to see if there are existing businesses providing similar goods and services under the same or a similar brand.

It is also important to ask yourself whether others would need to use your intended brand name in the normal course of business for your goods and services. If so, you may be unable to register the name.

There is no point in investing in a brand and expanding internationally if you cannot register the name as a trade mark.

Case Study: Burger King

Did you know that world-famous franchise ‘Burger King’ failed to obtain trade mark registration in Australia? This was due to an existing Burger King takeaway in Adelaide that had already registered the name as a trade mark. The US-based Burger King had to rebrand to a new name, ultimately landing on ‘Hungry Jacks’.

Patents and Designs

It is understandably much more difficult to conduct a search for inventions based on products, processes or designs that are similar to the ones you have created. As such, we recommend seeking advice from a patent attorney or solicitor before investing in your international expansion. There are also options to use the Australian Patent Office to perform a preliminary examination of your invention. This will provide a comprehensive insight as to your chances of successfully getting patent protection in overseas markets before embarking on an international patent pathway.  

Patentscope is a patent search system offered by WIPO that allows users to search patent documents from 39 national (or regional) offices. WIPO also maintains a design search database so you can understand whether the design of your product is infringing on another business’ rights. 

Balancing Budget and Protection

Trade Marks

So you have done your homework, and there do not appear to be any similar names in your intended markets. From here, it is important to act quickly.

Securing brand protection can take a long time in some countries (for example, Canada can take anywhere from 16 to 20 months, if all goes well). Also, some countries have a first to file system (for example, China). 

You generally have two routes when protecting your brand internationally. You can either:

1. file a direct application. This means lodging an application directly with a specific country. In most cases, you may have to engage a local trade marks attorney or legal representative. Direct applications are often fast and efficient, but the filing fees (and legal fees) can add up; or 
2. file a Madrid Protocol application. This is an international trade mark filing system that reduces the burden of multiple applications for the same trade mark. If the countries you intend to enter are parties to the Madrid Protocol, you only need to file a base application (often in your home country) and a Madrid application (which gets sent to the World Intellectual Property Office and then dispersed to the countries you selected). Madrid applications are significantly less expensive than direct applications, but can take longer to process and the trade mark must be the same for all countries selected. 

For a new business, the costs associated with international trade mark protection can be overwhelming. Although important, it may be worthwhile focusing on your business in your home country, or in a few selected markets, before taking on the world. 

Patents and Designs

Both patents and designs have staggered pathways. These allow for the filing of a patent application or design in Australia as a placeholder, which can be followed up with international applications.  However, there are strictly enforced windows of opportunity to file corresponding international applications from an Australian patent application (12 months for at least a PCT application) or design application (6 months).

If you only lodge an Australian patent or design application to save on costs, you could miss out on the chance to register your patent or design globally, if you do not act in a timely manner. This is because your own Australian application may be used against you and cited as ‘prior art’. Given the complexity of the patent system, you should seek advice on the options available to you from the outset.

Key Takeaways

If you intend on expanding your business internationally, it is crucial that you do your homework on existing businesses in other markets so that you can:

• protect and enforce your IP to the full extent; and
• understand if you are infringing on another business’ rights.

For assistance with initial research or any international applications for trade marks, patents or designs, please contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions