International expansion is an exciting step in your business’s evolution. If you are starting to, or even planning to, offer your goods or services to customers or clients outside of Australia, you should be developing a robust plan for protecting your intellectual property (IP). Indeed, your IP includes your business’s trademarks, such as your brand name or logo. To minimise the risk of other brands adopting your brand name and mimicking the sale of your goods and services, you should consider applying to protect your trade marks overseas. This article will explore various ways you can file an overseas trade mark.
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International Filing Options
Trademark registration is country-specific, and standards vary from region to region. Before applying overseas, consider where you will offer your products and services. For instance, are you targeting just one overseas market, or are you planning to have a wider global reach? Are you planning to offer the same goods or services overseas that you offer in Australia?
There are two main filing methods for applying to register your trade mark overseas:
- a direct national application to your country of interest; or
- an application via the Madrid Protocol, through which you can group several countries into one application.
Direct Filing Method
If you want to register your trade mark in one or two countries overseas, it is generally more cost-effective and faster to file direct applications in each relevant country. For example, say you want to sell your products on Amazon in the USA. In this case, you may choose to file a direct application to the USA to register your trade mark. Your application will be sent directly to the US Trademarks and Patents Office and will skip the additional steps involved in a Madrid Protocol application. This means your application will likely be allocated to an examiner faster, and you will receive a status update more quickly.
Additionally, there are some countries where you can only apply directly, as not all are parties to the Madrid Protocol treaty.
Madrid Protocol Filing Method
Applying via the Madrid Protocol pathway is generally your best option if you:
- plan to expand your business venture to offer your goods and services in many different countries; and
- are looking to register your trade mark in at least three countries overseas.
In this case, incorporating multiple countries into one application can become more cost-effective and may result in fewer official filing fees overall.
The Madrid Protocol is a treaty administered by the World Intellectual Property Organisation (‘WIPO’). Currently, around 126 countries are members of the Madrid Protocol. By filing through the Madrid Protocol, you only need to file one application with WIPO and nominate which member countries you would like to apply to.
A Madrid Protocol application must be based upon an application in your ‘home’ country or your ‘country of origin’. As a result, to apply through the Madrid Protocol, you will need first to have a:
- trade mark registered in Australia; or
- pending application on foot in Australia.
To be eligible to use your Australian registration or application as a base for your Madrid Protocol application, you must:
- have a real and effective industrial or commercial establishment in Australia;
- be living in Australia; or
- be a national of Australia.
If you meet one of the above entitlement requirements, you are considered to have a ‘connection’ to Australia. In this case, you must file your international application through the Australian trade marks office (i.e. through IP Australia, the governing body that administers trade mark applications in Australia).
The Madrid Protocol pathway can also be attractive if you are unsure how far your customer base may reach but have goals to expand beyond one or two international countries. You can subsequently designate further member countries at any point in the future as part of your Madrid Protocol application in a more streamlined and cost-effective manner. However, any subsequent designations will not have the same filing date as the initial application and will be attributed to new filing dates.
Key Takeaways
Filing a trade mark application overseas will take one of two forms:
- a direct application in your country of interest; or
- an application via the Madrid Protocol to apply to multiple countries concurrently.
The best option for you will depend on the following:
- your expansion plans;
- the countries to which you hope to offer your goods and services; and
- your budget and any time constraints.
In any case, it can be helpful to sit down with an experienced trade mark lawyer to help you determine which option is most suitable for your business venture.
If you need help registering a trade mark overseas, 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
Applying via the Madrid Protocol pathway is generally your best option if you plan to expand your business venture to offer your goods and services in many different countries and are looking to register your trade mark in at least three countries overseas.
If you want to register your trade mark in one or two countries overseas, it is generally more cost-effective and faster to file direct applications in each relevant country. In doing so, you can typically skip the additional steps involved with the Madrid Protocol. In this case, your application will likely be allocated to an examiner faster, and you will receive a status update more quickly.
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