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You may be about to launch a new business in Australia, or you may have already been developing a successful brand in your home country for several years. Either way, if you intend to offer your goods or services to an international customer base, protecting your brand overseas can be one of the most valuable investments you can make. 

Advances in technology and free trade offer you the greatest opportunity to reach wider audiences across the globe than ever before. It also exposes you to the risk of other traders discovering you, capitalising upon the reputation you are building up in association with your brand and registering the same or similar brand in some of your key target markets. 

Having a strong brand allows your customers to identify your business and refer your products or services to others. In some cases, it might also be essential to have a registered trade mark (or pending application on foot) overseas before you can start selling to that market. For example, you will need a valid trade mark to sell your goods on US Amazon.  

International intellectual property protection will be essential to retain and grow your business’s value if you intend to have global brand awareness. 

How Do I Protect My Brand?

The most effective form of brand protection is trade mark registration. Trade mark registration protects varying aspects of your branding like your business name, logo or catchy slogan. Successfully obtaining trade mark registration entitles you to exclusive rights. These include the right to use that trade mark for the goods and services you offer. Doing so offers you the ability to distinguish yourself from competitors in your market. 

Trade mark registration can also attract investors to your business. One of the first questions an investor will ask is whether you have trade mark registration. They will want to ensure they are investing in a company with exclusive rights to their branding. They also want to ensure you are not at risk of infringing upon another trader’s trade mark rights. 

Your first step in this process should be registering a trade mark in your home country. The application process will differ from country to country. Therefore, you should speak to a trade mark lawyer to guide you through this process. Correctly filing an application that thoroughly covers all of the goods and services you offer now, and intend to offer in the next few years, is an essential base for an international application. 

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How Can I Protect My Brand Internationally? 

Having an Australian trade mark registration does not prevent competitors in other countries from registering a similar or identical trade mark. This is because trade mark registration takes place on a country-by-country basis. Therefore, you will need to make an international trade mark registration. Depending on how many and which countries you are targeting, there are two main pathways open to you.

Direct Application

If you know you want to only register your trade mark in one country, it can be cheaper and faster to file a national application directly with that country’s trade mark office. You can file a direct application to any country of interest without an application or a registration in your base country. Suppose you operate your business in Australia. However, your client base is predominantly based in the USA. In this case, you can apply directly to register your trade mark in the USA. You do not need to spend additional time and money on an Australian trade mark.

However, it is helpful to think about your future goals. Consider where you may like to offer your goods or services within the next few years. You do not want to want to expand your business to the UK next year only to discover that a competitor has already registered a very similar or identical trade mark in the UK.

Madrid Protocol Application

Applying through the Madrid Protocol is generally the most cost-effective and streamlined option. You can also target multiple international countries. This is especially relevant for businesses that offer software or mobile applications. These businesses, by their very nature, can be accessed by users all around the world.
The Madrid Protocol is a treaty administered by the World Intellectual Property Organisation (‘WIPO’). Currently, around 126 countries are members of the Madrid Protocol. Therefore, 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.
In order to apply through the Madrid Protocol, you will need to have a ‘base’ application or registration – in other words:

  • trade mark registered in your ‘country of origin’; or 
  • pending application on foot. 

Key Takeaways

Registering a trade mark provides you with an enforceable right to stop others from using your trade mark, or something deceptively similar, in connection with similar goods or services as you. It can become one of the most valuable investments your business will make and has the potential to minimise future enforcement costs if copycats start to mimic your branding. 

The electronic permeability of international trade borders has created the need, more than ever, to consider brand protection overseas and in your key target markets. Enacting measures to protect your brand, such as trade mark registration, can mitigate dilution of your brand, minimise reputation damage, and ultimately help secure a successful client base.

To determine which application pathway is most appropriate for you, 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

Why is international brand protection important?

If you intend on trading outside of Australia, then brand protection is very important. You want your trade mark and brand to be protected everywhere it appears. Australian trade marks can only protect your brand in Australia, so extending your protection keeps your brand safe worldwide. Additionally, you can only access certain online platforms with a trade mark in that country.

Which international trade mark protection process should I select?

If you only need protection in one or two countries worldwide, direct application is a good option. This way, you can file a trade mark with a country’s trade mark office directly. It may be cheaper and easier to use this method. If you need protection in multiple countries, however, a Madrid Protocol application is a good option. This method allows you to apply to multiple countries at the same time. When deciding, consider your future brand strategy. Will you perhaps expand to more countries in the future? Take this into account.

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