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Trade mark protection operates on a country-by-country basis. This means that a trade mark that you register in Australia has no effect in any other country. To obtain overseas trade mark protection, you have two options: 

  • file a Madrid Protocol application; or 
  • file directly with a foreign trade mark office. 

Both applications have different processes and requirements, but both result in overseas trade mark protection. In the following article, we will look at these two processes so that you can determine which option is the most suitable for you.

Madrid Protocol Application

What is the Madrid Protocol?

The Madrid Protocol or Madrid system is a multilateral treaty that forms the primary system of obtaining international trade mark protection. If a country is a party to the multilateral treaty that forms the basis of the Madrid Protocol, then it can be designated under a Madrid Protocol application. You can only include countries that are a party to this treaty in a Madrid Protocol application.

In your Madrid Protocol application, you will designate the countries that you want to register your trade mark under one single application. For example, under a Madrid Protocol registration, you could designate the United Kingdom, China and India. Each country receives a separate application that they process in their respective trade mark office. However, each application is linked back to the one “umbrella” Madrid Protocol registration.

What Steps are Involved?

When filing a Madrid Protocol application, you must base it on an existing national application.

Therefore, if you want to use the Madrid Protocol from Australia, you must apply for an Australian trade mark.

Once you have filed the national application (usually in your country of origin), you must select the countries you want to apply in. This means that your international applications will be linked and based on your existing national application. This is one of the many benefits of filing via the Madrid system. 

Each country has its own separate official fees. Therefore, keep an eye on how much your application costs, as fees can increase exponentially.

Limitations

As outlined above, a Madrid Protocol application requires you to file an Australian application or registration. If you remove your Australian application or it fails for whatever reason, the Madrid Protocol registration may be invalidated. You may then have to use the direct application method.

Another limitation to the Madrid Protocol system is that you can only use it in countries that are a party to the Madrid Protocol. You can look up which countries are currently a party to the Madrid Protocol on the World Intellectual Property Organisation’s website. This list is subject to change as more countries join the Madrid Protocol.

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Direct Application

What is a Direct Application?

A direct application is an international application that you file directly in a particular country. However, instead of going through the Madrid system, you file with the help of an overseas associate via the local trade mark office.

What Steps are Involved?

Unlike a Madrid Protocol registration, you must file a direct application directly with the trade mark office of the relevant country. Some jurisdictions cover multiple countries (for example, the European Union), but in most cases, a direct application covers one country.

Filing directly requires the assistance of an attorney operating in the country you wish to file in. However, this can sometimes be an advantage, as the attorney will have direct access to the trade mark office and will usually report any updates or issues promptly.

Limitations

The main limitation to direct applications is the necessity of engaging an overseas attorney to assist with the application. This usually means that you will incur additional attorney fees on top of the official fees.

Another limitation is the fact that there is no link between this application and any of your other applications.

Key Takeaways

The most important question you should ask yourself before filing is which countries you want covered in your application. If the country is a party to the Madrid Protocol, and you have an existing domestic application, then that is usually the best option. Ultimately, the decision is up to you, and you should consider the costs and effort you are willing to put in for protection.

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

What countries are a party to the Madrid Protocol?

Many countries worldwide are a party to the Madrid Protocol. You can find a complete list on the World Intellectual Property Organisation’s website.

Do I need an Australian trade mark to register an overseas trade mark?

If you are using the Madrid Protocol, you must file an Australian trade mark application. However, if you are using a direct application, you do not need an Australian trade mark application.

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