- There is no such thing as a ‘global’ trade mark. Trade marks are a matter of domestic law in each country.
- A system called the Madrid Protocol can be used to obtain trade mark registration in multiple jurisdictions through a single application. Over 90 countries are members of the Madrid Protocol.
- The Madrid Protocol is not always appropriate or available. The alternative approach is to apply directly in each required 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 in each country of interest. In some cases, this will be the only option.
In other cases, you can also file through the Madrid Protocol – a system of international trade mark registration of which Australia is a member. This allows you to file a single application and choose which of the other member countries you wish to apply in.
Applying for a Trade Mark
An applicant, whether a person or legal entity, must satisfy at least one of the following criteria:
- the applicant must be an Australian national
- the applicant must be domiciled in Australia
- the applicant must own a real and effective industrial or commercial establishment in Australia
The date of your earliest application for a particular trade mark is known as your priority date. If you file overseas within 6 months of this date you are entitled to claim (in most countries) priority, so that each international application will be treated as though filed at the same time as your Australian application.
This will provide you with preference over any application filed during that time with a later priority date. This provides a good window of time to plan and budget for any overseas trade mark requirements.
This is a strict six month period, and cannot be extended. If you file later than 6-months, you will lose the right to claim priority based on your earlier Australian application and each foreign application would then be treated as filed on the precise physical filing date.
European Community Trade Mark
A Community Trade Mark (CTM) extends to all member countries of the European Union and can be achieved by filing a single application (or, selecting it as a single designation under the Madrid Protocol). If approved, you will gain the same level of protection and right as you would by filing into each European Union member separately.
However, it is important to note that because it is a single application, a rejection due to a problem in one-member country will affect the entire CTM application.
- International applications for trade mark registration that are based on Australian trade mark applications must be filed through IP Australia.
- To request a change to an internationally registered trade mark, it can be made in writing directly with the International Bureau. The International Registration number must have already been allocated.
- The cost to register a trade mark overseas will depend on how many countries you want your trade mark to be protected in and how many classes you apply for.
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 the rights of someone in another country.
Australia, along with other member countries of the World Intellectual Property Organisation has established guidelines to help protect trade mark owners when doing business over the Internet.
It is possible to lodge a notice with the Australian Customs and Border Protection Service (ACBPS) to formally object to the importation of goods that infringe your registered trade mark. This is administered by the ACBPS.
If goods are imported that infringe your trade marks, they will be seized by Customs. 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 World Intellectual Property Organization (WIPO) in Geneva.
Q: How do I pay for an international trade mark registration?
A: All fees may be paid 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?
We have helped many businesses with their international trade mark applications, and it would be our pleasure to assist you. We provide fixed prices for your certainty and peace of mind. Call LegalVision today on 1300 544 755.
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