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If your business has a global presence or has imminent plans for overseas expansion, it is important to ensure that you have trade mark protection in each country you operate in. Once registered, you should note any deadlines for renewal or maintenance required by the trade mark office in each country. Missing a renewal or maintenance deadline could result in the removal of your registration. In this article, we will look at some of the ways you can maintain your overseas trade marks.

Maintaining Your Overseas Trade Mark

If you have used a Madrid Protocol trade mark registration through the World Intellectual Property Organisation, the process is simple. For most countries designated under a Madrid Protocol application, the only maintenance required for a registered trade mark is a renewal ten years after filing your application (and every ten years after that). However, you should look at the certification from the national trade mark office. Here, you can check if the office requires earlier renewals or periodic maintenance to maintain the registration.

Trade mark maintenance involves renewals, as well as declarations of use. Some countries, such as the US and the Philippines, require these declarations every few years. This ensures that a registered trade mark owner is still using their trade mark for the goods and services claimed. Complying with these requirements is crucial to ensuring that your registration is maintained. If they are not complied with, your registration will likely lapse.

Display Ownership of Your Trade Mark

Once you register your overseas trade mark, you can use the ® symbol in all of your trading activities in the particular country of registration. This demonstrates to everyone that sees the trade mark that you are the owner of a registered trade mark. Therefore, this can prevent other parties from using it. You can also display ownership of a trade mark in other forms, such as through your contractual relationship with various parties. One such example is via a website terms of use. 

The website terms of use is a legal document that applies to everyone that visits your website. It often requires visitors to acknowledge your intellectual property rights for the material on your website, including your trade marks.

Online Watching Services

Various online services can assist you with managing and maintaining your trade mark. By using these services, you can monitor possible trade mark applications that may be similar to your own.

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Maintaining Your Domestic Trade Mark

If you have filed a Madrid Protocol registration, you must also maintain your domestic registration. If your domestic trade mark lapses, the Madrid Protocol registration may be invalidated and removed from the register.

You must ensure that your domestic trade mark remains for the first five years (the ‘dependency period’). If a trade mark application or registration is invalidated, lapsed or revoked within the five years, this may jeopardise the trade marks you have registered overseas. 

Suppose you have filed a Madrid Protocol application based on a domestic registration that lapses. In that case, you can file a request to convert the designations covered by the Madrid Protocol application into domestic applications. This will incur additional costs, so it is not ideal. However, it will at least salvage your international trade mark protection.

Updating your Overseas Trade Mark

By updating your overseas trade mark when your business activity changes, you can ensure you have the correct level of protection to cover you in all relevant areas of activity. 

You can also apply for additional protection in other countries if your business grows and begins to operate in other markets. If you file a Madrid Protocol application, you can file subsequent designations to additional countries. Bear in mind that these new designations will have a different filing date than the countries covered in the initial filing.

Key Takeaways

It is important to register a trade mark in countries where you operate and then subsequently maintain those trade marks. Sometimes, a third party may make unauthorised use of your trade mark overseas. In that case, a registered trade mark is the best weapon against such infringement, potentially saving you time and money arguing your case.

Maintaining your overseas registrations is key to enforcing your trade mark protection. You should note any deadlines for renewal or maintenance to ensure you do not miss them.

If you need help understanding overseas trade mark applications, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions

Do I need an Australian trade mark to submit a Madrid Protocol application?

You must have filed for an Australian trade mark to receive a Madrid Protocol overseas trade mark. Additionally, you must maintain your domestic trade mark to continue enjoying Madrid Protocol protection.

What steps are involved in maintaining a trade mark?

To maintain a trade mark, you must renew it, monitor for infringements and depending on the country, make declarations of use.


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