Intellectual Property (IP) Australia is the government body that receives and processes all trade mark applications. If IP Australia approves your trade mark application, you can receive protection in the Australian market. However, if you would like protection in a country outside of Australia, you will need to register your trade mark in the individual countries where you operate. There are various ways in which you can protect your trade mark internationally. It is the trade mark owner’s responsibility to enforce and maintain their trade mark rights, so it is important to understand how you can apply for this protection.

Display Ownership of Your Trade Mark

Once you have received approval for your international trade mark, you will be authorised to use the ® symbol in all of your trading activities. This is beneficial, as it highlights your ownership of the specific trade mark and will likely prevent other parties from using your trade mark. You can also display your ownership of a trade mark in other forms, including through your contractual relationships with various parties. The most important one, especially if you are trading online, is the Website Terms of Use. The Website Terms of Use is a legal document that applies to all people who visit your website. It often requires visitors to acknowledge your intellectual property rights for the material on your website, including a trade mark.

Online Watching Services

Various online services can assist you in managing and maintaining your trade mark.  For example, the Madrid Electronic Alert system helps you to stay informed when international trade marks are being registered. You will then be able to monitor possible trade mark applications that may be the same or similar to your own. The Madrid Electronic Alert system will then also help you in responding in a timely manner and issue ‘oppositions to trade mark applications’ before they are approved.

Maintaining Your Domestic Trade Mark

As an international trade mark often relies on the existence of an Australian trade mark, you must ensure that your Australian trade mark remains in existence for the first five years. If a trade mark no longer exists within the five-year period, this may jeopardise the trade marks you have registered overseas. A domestic trade mark can cease being operational if, for example, there was an order for cancellation by the court or the trade mark was not being used, and a non-use action was brought forward.

Updating Your International Trade Mark

By updating your international trade mark when your business activity changes, you can ensure that you have the correct level of protection to cover you in all the relevant areas. You can also apply for additional protection in other countries if your business continues to grow and begins to operate in other markets.

Conclusion

It is important to register a trade mark in the countries where you are operating and maintain your trade mark’s existing protection. Similarly to an Australian trade mark, you will need to be able to enforce and maintain your trade mark ownership. If you find that another party may be infringing your trade mark overseas, find out what steps you can take by contacting our team of specialist trade mark lawyers.

Kristine Biason

Next Steps

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