International Trade Mark Filing Strategies for the USA, China and New Zealand

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Table of Contents

• What International Trade Mark Filing Strategies are Available?
• Assessing Each Strategy’s Cost-Effectiveness

According to the 2015 Australian Intellectual Property Report, Australians who applied for trade mark registrations in other countries filed the most in the United States, China and New Zealand.

These figures demonstrate that trade mark owners recognise the importance of having a trade mark portfolio that includes trade mark registrations in countries of interest. Remember, no international trade mark laws protect Australian registered trademarks in a different country. 

To acquire trade mark rights in other countries, you need to apply in each country directly. We begin then by outlining the filing strategies available to the countries that have been the top three destinations of residents filing overseas: the United States of America, China and New Zealand.

What International Trade Mark Filing Strategies are Available?

In the United States, New Zealand and China, there are two filing strategies available. The first strategy is to apply to each countries’ respective trademarks offices. The second strategy is to file for an international application under the Madrid Protocol and designate the above countries in the application. Below, we set out three ways to assess the cost-effectiveness of each strategy to help you better decide.

Assessing Each Strategy’s Cost-Effectiveness

1. Direct Application

Directly applying for trademarks in each of the countries’ trade mark offices will potentially be more time consuming and costly for the applicant for the following reasons:

• The need to brief local associates;
• Different trade mark application documents and requirements;
• Possibly requiring translation services;
• Time needed to manage multiple applications in different countries with different filing dates. 

2. International Application Through the Madrid Protocol

Filing through the Madrid Protocol is potentially more cost effective for the following reasons:

• You only need to file one application to designate multiple countries;
• You can file the application in English through IP Australia, bypassing the need for translation;
• You can pay in Australian dollars; 
• You can more easily manage your applications to different countries as they will all have the same filing dates. 

3. Risks Associated With Each Strategy

The risks associated with directly applying for trade marks in multiple jurisdictions include:

• Complicated management of your trade mark portfolio from different jurisdictions; and 
• It can be more expensive. 

Risks related to filing an international trade mark through the Madrid Protocol include:

• Relying on international trade mark registration that is dependent on basic trade mark registration for the first five years (dependency period);
• If your basic trade mark does not proceed to registration within the dependency period, the international registration and designations are cancelled; and
• The length of time to accept and register because the World Intellectual Property Organisation (WIPO) needs to examine the international application.

Questions about your international trade mark filing strategy? Get in touch on 1300 544 755.