Do you need trade mark protection overseas? If so, this article sets out what you need to know about international trade marks.

  • Although you can register your trade mark internationally, there is no such thing as a single global trade mark. 
  • Trade marks are a matter of domestic law in each country.
  • You can use the Madrid Protocol system to obtain trade mark registration in multiple jurisdictions through a single application. Over 90 countries are members of the Madrid Protocol, including Australia.
  • The Madrid Protocol is not always appropriate or available. The alternative approach is to apply directly in each jurisdiction.

Registering a Trade Mark Internationally

Trade marks are generally governed by domestic law in each country. To protect your brand overseas, you can apply for trade mark protection by filing national applications directly to each of your desired countries. In some cases, this will be the only option.

In other cases, however, you can also file through the Madrid Protocol. This is a system of international trade mark registration. The Madrid Protocol system allows you to:

  • file a single application directly to the World Intellectual Property Organisation (WIPO); and
  • choose which of the other member countries you wish to apply in later.

Applying for a Trade Mark via the Madrid Protocol

To apply for a trade mark via the Madrid Protocol, you must satisfy at least one of the following criteria. You must:

  • be an Australian national;
  • be domiciled in Australia; or
  • own a real and effective industrial or commercial establishment in Australia.

To qualify for a Madrid Protocol application, you must first have filed an Australian trade mark application as a base application. However, you will not require an Australian base application for direct international filings. 

For example, if you only want to file a direct application to the USA, you will not need to file an Australian application beforehand. 

Priority Period

The date of your earliest application for your Australian trade mark is known as your priority date. However, you must file your international applications within six months of your Australian filing date. 

For example, suppose you file overseas via the Madrid Protocol within six months of the Australian filing date. In that case, you can claim priority (in most countries), so that each international application will be treated as though you filed it at the same time as your Australian application.

The priority period will give you preference over any other application filed during that time with a later priority date, providing you with a decent window of time to plan and budget for any overseas trade mark requirements. The priority period is a strict six month period which you cannot extend. If you file your Madrid Protocol application after these six months, you will lose the right to claim priority from your earlier Australian application. In this case, each foreign application would then be treated as filed on the precise physical filing date.

European Union Trade Mark

As part of the Madrid Protocol Application, you can designate the European Union (EU) as a single region. This extends to all member countries of the European Union. You can also file directly to the EU if you do not want to proceed via the Madrid Protocol. If your EU filing obtains approval, you will have legal protection in all the member countries in the EU. You can then file directly to countries that are not EU members, such as Switzerland.

Key Considerations

  • International applications for trade mark registration based on your Australian trade mark application must be filed through IP Australia.
  • You can request a change to an internationally registered trade mark in writing directly with the WIPO International Bureau. WIPO must have already allocated your International Registration number.
  • The cost to register a trade mark overseas will depend on how many countries you want to file in and how many classes you apply for.
  • A successful trade mark application in Australia does not guarantee a successful application in your designated international countries. 
  • Once WIPO approves your Madrid Protocol Application in all your designated countries, you then have legally enforceable rights to use your trade mark in each of those countries.

Use of International Trade Marks

Use on the Internet

Trade mark rights apply country-by-country, and use of your trade mark on the internet could inadvertently infringe someone’s rights in another country. Therefore, you may want to consider securing your rights by filing a trade mark overseas if you have been using your trade mark on the internet for a considerable time. 

Australia and other member countries of WIPO have established guidelines to help protect trade mark owners when conducting business over the Internet.

Importing Goods

It is possible to lodge a notice with the Australian Customs and Border Protection Service (ACBPS) to formally object to imported goods that infringe your registered trade mark.

If goods are imported that infringe your trade marks, the ACBPS will seize those goods. You then need to determine whether they are to be released or not and pay any relevant fees.

Frequently Asked Questions about International Trade Marks

Q: What is IB?

A: IB is the International Bureau of the World Intellectual Property Organisation (WIPO).

Q: What is the Madrid Protocol?

A: The Madrid Protocol is a treaty that provides international registration of a trade mark. It is administered by the International Bureau (IB) of the WIPO in Geneva.

Q: How do I pay for international trade mark registration?

A: You can pay all fees either directly to the IB in Swiss francs or to IP Australia in Australian dollars at the time of filing.

How can LegalVision help me?

LegalVision has helped many businesses with their international trade mark applications. We provide fixed prices for your certainty and peace of mind. Contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

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