How Do I Register a Trade Mark Using the Madrid Protocol?

In Short

• The Madrid Protocol allows you to register a trade mark in multiple countries through one application.

• You must first have a registered or pending trade mark in Australia (a “basic mark”).

• Not all countries are part of the Madrid Protocol, so some may require separate applications.

Tips for Businesses
Before expanding into overseas markets, ensure your trade mark is protected where you plan to operate. Start by registering in Australia, then consider the Madrid Protocol for broader coverage. Use professional advice to avoid errors, especially when dealing with varying international rules and renewal deadlines.

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Table of Contents

• What is the Madrid Protocol?
• How Long Will Trade Mark Protection Last?
• Alternatives to the Madrid Protocol
• Key Takeaways
• Frequently Asked Questions

A trade mark is a sign used to identify your goods or services to consumers. A trade mark can be registered if it is distinctive, does not conflict with a trade mark with earlier rights, and is not prohibited. It can be a:

• name;
• image;
• logo;
• slogan;
• colour;
• smell;
• sound;
• shape; or
• a combination of these things, so long as it is capable of being distinctive in this manner.

A registered trade mark is only protected in the country of registration. This means that if you have a registered trade mark in Australia, it is only protected in Australia. If you would like to seek international registration of your trade mark, you can apply for registration directly with that country or via the Madrid Protocol. This article examines how you can gain international brand protection and the Madrid Protocol’s role in streamlining registration.

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What is the Madrid Protocol?

The Madrid Protocol is a treaty that provides for the international registration of trade marks. This system facilitates trade mark registration in multiple countries through a single application. This is administered by the World Intellectual Property Organisation (WIPO). When multiple countries are involved, the Madrid Protocol application provides a more straightforward and cost-effective means of securing international registration.

To rely on the Madrid Protocol, several factors must be considered. These include:

• you must have an existing national trade mark application or registration, also known as a basic trade mark;
• the international trade mark must be identical to the basic trade mark, and cover the same, or some of the goods and/or services as the basic trade mark;
• the owner of the international application must be the same as the owner of the basic application; and
• the owner may only file an international application based on an Australian basic mark if they are an Australian national. Alternatively, they must be domiciled, an incorporated body, or have a real and effective commercial establishment in Australia.

There are 115 members of the Madrid Protocol, covering 131 countries. Certain members have centralised IP registration offices, providing protection for each of their member countries, such as:

• the European Union (EU); and
• the African Intellectual Property Organisation (AIPO).

How Long Will Trade Mark Protection Last?

Successful international registration of your trade mark is valid for 10 years. Much like the processes in Australia, you can renew your registration at the end of this 10-year period. You can file a request for renewal with WIPO three months before the expiration of the international trade mark registration. This will remain in effect until the end of the six-month grace period following this date. Renewal fees may vary depending on the region of registration and the number of classes in which your trade mark is registered.

Alternatives to the Madrid Protocol

If you are seeking to register your trade mark in a non-Madrid Protocol member country, you can apply for registration directly with that country. Countries that are not currently Madrid Protocol members include South Africa, Kuwait, Argentina and Saudi Arabia, to name a few. 

Key Takeaways

Registering a trade mark internationally can be complex, as trade mark rights are territorial and must be secured separately in each country. The Madrid Protocol provides a streamlined and cost-effective way to register a trade mark in multiple jurisdictions through a single application. 

If you need help navigating the Madrid Protocol requirements and protecting your brand overseas, our experienced IP lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page. 

Frequently Asked Questions

How can I protect my brand internationally?

If you wish to expand your business overseas, it is essential to protect your brand in each country in which you plan to operate. As trade marks are territorial, you will need to apply to register your trade mark in each country or region of interest. This can be done directly through the trade mark office of each country, or you can file via the Madrid Protocol. 

What are the advantages of filing via the Madrid Protocol?

Through the Madrid Protocol, you can file a single application to protect your brand in multiple markets simultaneously. Not only does this save time, but it may be a more cost-effective method than filing directly in each country of interest.