A trade mark protects 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, if you have a registered trade mark in Australia, your trade mark 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.

What is the Madrid Protocol?

The Madrid Protocol is a treaty providing for international registration of trade marks. This system facilitates trade mark registration in multiple countries through a single application, administered by the World Intellectual Property Organisation (WIPO). Where multiple countries are required, the Madrid Protocol application can provide a simpler and more cost effective means to secure international registration.

To rely on the Madrid Protocol, there are a number of factors to consider. These include:

  • You must have an existing national trade mark application or registration (called 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.
  • The owner of the basic mark may only file an international application in Australia if they are an Australian national, domiciled in Australia, be an incorporated body in Australia or have a real and effective commercial establishment in Australia.

There are 91 jurisdictions that are members to the Madrid Protocol. If you are seeking to register your trade mark in a country, such as Canada, which isn’t a member of the Madrid Protocol, you can apply for registration directly with that country. Please note the rules and processes for trade mark registration vary from country to country, including differences in costs, statutory requirements, and examination processes.

How Long Will Trade Mark Protection Last?

Successful international registration of your trade mark with members to the Madrid Protocol 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 until the end of the six month grace period following this date. Fees for renewal may vary depending on the country of registration and the number of classes your trade mark is registered under.

Conclusion

Registering a trade mark is not always a simple process. The process can be complicated if you are looking to register your trade mark internationally. Our team of IP lawyers have extensive experience in this area and would be happy to assist with international registration of your trade mark via direct application or through the Madrid Protocol. To speak with one of our IP lawyers today, contact LegalVision on 1300 544 755.

Lisa Lee

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