How Can I Protect My Brand Overseas?

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Table of Contents

• Forms of IP Protection
• Costs to Consider
• Priority Date
• Key Takeaways
• Frequently Asked Questions

As a business owner, you may considering protecting your brand internationally. For example, if you intend to operate your business outside of Australia, you might consider protecting any relevant trade marks, patents or design rights internationally. This article will provide further details on how to protect your brand overseas.

Forms of IP Protection

Trade mark, patent or design registration in Australia does not automatically confer international registration or protection. Hence, if you wish to establish business elsewhere in the world, you should consider filing an international application to protect your brand from infringement. 

Nevertheless, various options are available to applicants seeking to register a trade mark, design or patent internationally.

Trade Marks

Filing a trade mark internationally can be done via the Madrid Protocol system by designating one or more member countries. The Madrid Protocol filing system is a convenient and cost-effective way to register and manage trade marks worldwide. It allows applicants to commence their registration through IP Australia, and then add specific countries to their Madrid Protocol application. 

In saying that, it is important to remember that your international trade mark registration depends on your Australian trade mark (the ‘basic trade mark’). This dependency remains for five years. Therefore, your international registration will be affected if: 

• IP Australia does not register your basic trade mark;
• a third party opposes your application; or 
• you cancel your application. 

Alternatively, an applicant may file a direct national trade mark application to the relevant country. 

Patents

Filing a patent internationally can be done through the Patent Cooperation Treaty (PCT) system. This is where applicants can apply for patent protection in up to 151 member countries. 

Alternatively, a prospective applicant may also file a provisional patent application or standard patent directly to the relevant country.

Designs

In most cases, you will have to apply directly for a design right in your country of interest. Each country or region has its legal requirements and terms of protection. In some countries, designs can even be protected without registration. 

However, in some instances, you can apply to safeguard designs internationally through the Paris Convention or the Hague System for the International Registration of Industrial Designs.

Costs to Consider

The costs to apply for an international trade mark, design, or patent can depend on various factors, including the:

• number of classes in a trade mark application;
• number of claims in a patent application; or 
• type of design registration you seek to protect.

Along with the filing fees, there are also renewal fees to consider. The renewal periods for designs, trade marks and patents can vary. Hence, it is essential to ensure that these timelines and costs are factored during the application process. 

While IP Australia manages your domestic trade mark renewals, there are various ways to renew your international IP rights. Nevertheless, you must renew your international registration in time to avoid losing protection in all the designated countries under the trade mark, design or patent application.

Priority Date

Australia is a member country of the International Convention for the Protection of Industrial Property (the Paris Convention). Hence, applicants can file an international trade mark, design or patent application to countries that are party to the Paris Convention. To file an international application under the Paris Convention, prospective applicants must use a corresponding domestic application as the basis for filing.

Given that international applications can be expensive, the priority period (either six months or twelve months) between the domestic and international filings can help a business manage the expenses associated with filing trade marks. If you lodge the international application after the priority period, your priority date will be the day you applied in that country rather than the date of your earlier application.

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Key Takeaways

Protecting your IP rights internationally can be complex and costly. Depending on whether you would like to protect your trade mark, patent or design internationally, various avenues are available to protect your rights. Based on the type of right you wish to register, the costs can vary, and there is also the relevant priority period to consider.

If you need help protecting your brand overseas, our experienced trade mark lawyers can help 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. So call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions