How to Protect Your Trade Mark Internationally

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Table of Contents

• Madrid Protocol
• What are the Steps Involved?
• Direct Applications
• Other Things to Consider
• In Summary

Business owners commonly ask us about international trade mark protection and whether it’s possible to register a ‘global’ or ‘worldwide’ trade mark. Unfortunately, there is no way to register a ‘global’ trade mark, but there are ways of gaining protection in multiple countries or jurisdictions.

Typically, trade marks are a matter of national law. The criteria for registration and the protection provided differ from country to country, but there are systems in place to facilitate protection across multiple jurisdictions. Generally speaking, there are two options for registering a trade mark in multiple countries. Below, we set out how to protect your trade mark internationally via the Madrid Protocol or Direct Applications in each required country. 

Madrid Protocol

The Madrid system facilitates registration of trade marks in multiple jurisdictions through a single application. It relies on the applicant having a trade mark application or registration (known as the ‘basic’ application or registration) in one of the member countries on which to base the Madrid application. When applying, the applicant must designate the countries in which they require protection, and fees apply for the application and on a per country basis.

As at December 7 2015, 97 countries are members of the Madrid Protocol.

What are the Steps Involved?

The process follows these steps:

1. The ‘basic’ application is submitted.
2. The international application is submitted through the Office of Origin (where the basic application/registration was filed), designating the countries (or jurisdictions) in which protection is required.
3. The World Intellectual Property Organisation (WIPO) receives the international application, who performs a formalities check of the application. At this point, if the formalities are satisfied, the trade mark will be given an international registration number.
4. The application is then passed to the offices of the designated countries, who each assess the trade mark under their own national law. Each office will separately issue a certificate of registration if the mark complies with their national law.

Because Madrid Protocol applications are centrally administered, it can often be a more cost-effective means of obtaining registration in multiple countries. However, it is not without its limitations:

1. The international application must be for the same mark and the same (or a subset of) goods/services as the basic application.
2. The international registration is contingent on the basic application for five years. This means that the international registration reflects any amendment or cancellation of the basic application.
3. The applicant must be a citizen, resident of, or company registered in the originating jurisdiction.
4. The need to engage local practitioners if there are any issues with the application in any of the designated member countries may undermine the cost savings obtained by using the Madrid system.

Direct Applications

Where the Madrid Protocol is not available or not appropriate, it is possible to obtain registration by applying directly in each required country/jurisdiction. In most cases, it will be necessary to engage a local representative to prosecute the application.

While this can be a more expensive approach, it can be beneficial if there is a likelihood that the trade mark application or registration will be opposed, cancelled, or limited, or if there are concerns about registrability in a particular jurisdiction.

Other Things to Consider

While most countries operate their own trade mark law, there are three multi-country jurisdictions where it is possible to obtain trade mark protection:

1. European Union;
2. African Intellectual Property Organization (OAPI); and
3. African Regional Intellectual Property Organization (ARIPO).

Applicants considering applying in OAPI or ARIPO should investigate whether the relevant organisation’s provisions have been implemented in the national laws of the member countries of concern.

In Summary

International trade mark protection can be much more involved and complex than protection in a single jurisdiction. If you are considering protecting your trade mark internationally, it is best to seek the assistance of a qualified professional experienced in prosecuting international trade mark applications. LegalVision assists businesses to protect their trade marks around the world. If you have any questions, let us know on 1300 544 755.