If your business is looking to expand overseas, it’s important that your brand is protected. Failure to protect your trade marks internationally may mean that you’re unable to exploit markets that would otherwise have been lucrative. For this reason, it’s important to understand how international trade mark protection works.

Many businesses would like to register a ‘global’ trade mark. Unfortunately there is no such thing as a ‘global’ trade mark. There are however, systems in place that facilitate trade mark registration/protection in multiple jurisdictions. Examples of these systems include the Madrid Protocol, and the European Community Trade Mark.

For Australian businesses there are generally two options to protect your trade mark internationally:

  1. File an application through the Madrid Protocol; or
  2. File applications directly in each country required.

Both approaches have their advantages and disadvantages.

The Madrid Protocol

The Madrid System facilitates trade mark registration in multiple jurisdictions, by allowing applicants to file a single application designating the jurisdictions in which protection is required. It is administered by the World Intellectual Property Organisation (WIPO). Since multiple jurisdictions can be covered by a single application, the Madrid Protocol reduces the administrative burden and is often more cost-effective than filing direct applications in each required jurisdiction.

The Madrid Protocol currently has 91 members, including the European Union, and African Intellectual Property Organisation (OAPI).

There are, however, some important factors to consider:

  1. An application through the Madrid Protocol requires an application or registration in one of the member countries. This is known as the basic application/registration.
  2. The international application/registration is dependant on the basic registration for a period of 5 years. Any cancellation, restriction or amendment to the basic application in this time will affect the international application in the same way (for example, by removing one of the goods or services claimed). For this reason it’s important to ensure that the basic application will be accepted in the originating jurisdiction before filing internationally.
  3. Not all countries are available through the Madrid Protocol. For Australian applicants, notable absences include Canada and South Africa.
  4. Some countries will have additional filing requirements. For example, the USA requires a declaration of intention to use the trade mark there, and will require a statement of use between years 5 and 6 from registration showing use to be continuing.

Direct Applications

Where the Madrid Protocol is not appropriate or available it is possible to apply for trade mark protection in each required country. This usually involves engaging a local agent to attend to the filing of the application, and as such the fees for direct applications in multiple jurisdictions can be higher than filing through the Madrid Protocol.

There may be other requirements as well, such as provision of a Power of Attorney to the local agent, as well as legalisation of documents at additional cost.

What is the best approach?

The best approach depends on a number of factors:

Cost

The fees for Madrid Protocol applications are determined by the countries designated and the particular trade mark being applied for. Where multiple countries are required it can be cheaper than filing directly in each country as there is no need (in straightforward cases) to engage local agents.

Where protection is required in only one or two jurisdictions, the Madrid Protocol may not be the most cost effective method.

If the trade mark is likely to encounter issues, the cost savings achieved by filing through the Madrid Protocol may be undermined by the need to engage local attorneys to resolve them.

Suitability of Trade Mark/Likelihood of issues

If a trade mark is likely to encounter issues in the originating jurisdiction (for example if it is likely to be opposed), then the Madrid Protocol may not be the best approach.

Availability of Jurisdictions

As not all countries are available through the Madrid Protocol, direct applications will be required in countries not available.

Conclusion

When considering international trade mark protection it’s important to speak with an experienced professional about the approach best suited to your business. Each situation is different, so an appropriately qualified professional can provide guidance to make sure your brand is protected both at home and abroad.

LegalVision has a team of great IP lawyers who can assist you. Please call our office on 1300 544 755 and our Client Care team will happily provide you with an obligation-free consultation and a fixed-fee quote.

Daniel Smith

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