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.

Raya Barcelon
If you would like further information on any of the topics mentioned in this article, please get in touch using the form on this page.
  • We will be in touch shortly with a quote. By submitting this form, you agree to receive emails from LegalVision and can unsubscribe at any time. See our full Privacy Policy.
  • This field is for validation purposes and should be left unchanged.
Would you like to get in touch with Raya about this topic, or ask us any other question? Please fill out the form below to send Raya a message!
  • We will be in touch shortly with a quote. By submitting this form, you agree to receive emails from LegalVision and can unsubscribe at any time. See our full Privacy Policy.
  • This field is for validation purposes and should be left unchanged.

Privacy Policy Snapshot

We collect and store information about you. Let us explain why we do this.

What information do you collect?

We collect a range of data about you, including your contact details, legal issues and data on how you use our website.

How do you collect information?

We collect information over the phone, by email and through our website.

What do you do with this information?

We store and use your information to deliver you better legal services. This mostly involves communicating with you, marketing to you and occasionally sharing your information with our partners.

How do I contact you?

You can always see what data you’ve stored with us.

Questions, comments or complaints? Reach out on 1300 544 755 or email us at info@legalvision.com.au

View Privacy Policy