Trade marks are a valuable intellectual property asset, and you will need to expand your trade mark portfolio as your business grows and looks to enter global markets. Trade marks are a matter of national law, and no global trade mark will offer your business protection worldwide. Depending on your business’ growth ambitions and objectives, you must decide in which countries you would like to register your trade mark. Whether you are just starting your business or considering expansion, it’s prudent to have an IP strategy in place that will protect your business in a cost-effective manner. 

Know and Understand the Value of Your Trade Mark

With setting up and operations costs building up, it’s easy for trade mark registration and enforcement to fall to the wayside. Your business’ name or logo, however, is how people recognise and associate with your business. It also can become an identifiable asset that you can sell or license to others for a fee. 

Remember, trade mark offices around the world, including Australia, are more likely to approve distinctive trade marks which easily distinguish their associated goods and services. Once you have a registered trade mark, it’s much easier and less costly to enforce your mark against potential infringers. Consider then allocating a portion of your business’ budget to trade mark registration and enforcement.

File an Australian Trade Mark Application 

If you are an Australian business, the first step is usually to file an Australian trade mark application. Australian trade marks take 7.5 months to register, so be sure to factor this into your timeline. You get a priority date from the date you file the application, but you won’t have the registered trade mark until 7.5 months later. The Australian priority date is useful for international applications in countries that are signatories to the Paris Convention.

Which Countries?

Where is your target market? It’s tempting to register trade marks in large markets like the United States. But, if you don’t intend to trade to the US, it may be an unnecessary hassle and expense. Some countries require you to show evidence that you are using a trade mark before you can register. For example, the US requires you sign a declaration that you are using or intend to use the trade mark when you first apply, and halfway through the ten-year registration. 

The next step is to factor in timeframes and costs for filing applications in the relevant countries. Before you do so, however, ensure the trade mark is available. Search the internet for businesses that may already be using your trade mark or similar marks. If any businesses are using a similar mark, check whether it’s registered and whether your use may constitute infringement.

Registering a trade mark will provide you with an exclusive right to use the mark in relation to the goods and services your business provides. Exclusive right allows you to stop others from using the same or similar mark for their business. 

Timeframes

As mentioned, IP Australia can take 7.5 months to register a trade mark. Timeframes vary between jurisdictions, but in some countries, they can take up to two years. If the countries you intend to register your mark in are part of the Paris Convention, you can leverage the benefit of an earlier Australian priority date. 

It then pays to lodge your Australian trade mark early. If you file your application six months before the Australian priority date, the international trade mark office will consider you to have filed your international trade mark on the priority date rather than the filing date. If the countries you are looking to register in are not part of the Paris Convention, then you do not have this six-month advantage.

Costs and Filing Methods

Available filing methods also vary depending which country you are seeking registration. You can file direct applications for international trade marks which will go directly to the national trade marks office (similar to IP Australia).

Alternatively, there are a number of countries that are part of the Madrid Protocol system. The filing system for the Madrid Protocol involves using the application as a base and filing one application to receive protection in multiple jurisdictions. 

Prioritise Countries 

Once you start looking at costs for registering trade marks internationally, you’ll notice the fees gradually accumulating. You may not be able to secure protection in all the countries you need. It may then be helpful to look at which countries have the highest projected sales for your business to help you prioritise. Consider this in light of potential competitors and the nature of your business.

Key Takeaways

Ensure you allocate time to planning your global trade mark strategy. Prioritise which countries your business intends to break into and remember that registration takes time. Trade mark laws also vary across jurisdictions, so acceptance in one country does not guarantee acceptance in others. If you have any questions or need assistance completing your international trade mark applications, get in touch with our IP lawyers on 1300 544 755 or fill out the form on this page.

Dhanu Eliezer

Next Steps

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