In both the UK and Australia, a trade mark can protect a sign that differentiates your business’s goods and services from others. However, a trade mark you register with the United Kingdom Intellectual Property Office (UKIPO) will not have protection in Australia unless you apply for additional protection. You can seek out extra protection by applying for trade mark registration:
- directly with IP Australia; or
- using a Madrid Protocol application.
This article explains the processes involved with each application pathway.
International Trade Marks
A trade mark you register in the UK only enjoys protection within the UK. Consequently, if you seek to expand your business and want to protect your trade marks in other countries, you must seek additional protection.
If you only want protection in Australia, filing a direct application with IP Australia is generally more cost-effective. IP Australia is the equivalent of the UKIPO in that both government agencies administer intellectual property rights.
Filing A Direct Trade Mark Application
There are two main trade mark application pathways in Australia, the first being a standard trade mark application. You can file a standard trade mark application with IP Australia via its online services. In your standard application, you must include:
- your personal information;
- a description and representation of your trade mark; and
- a description of the goods and services to which it will apply, including the relevant trade mark classes list.
Once you file your application and pay the relevant fee, you will receive a trade mark filing number. IP Australia will examine your standard application four to five months after filing.
Alternatively, you can register your trade mark using a TM Headstart application. This application pathway provides an additional pre-assessment service, meaning an examiner at IP Australia reviews your application before you file it with IP Australia. This can allow you to identify any potential issues in your application and make changes accordingly.
Generally, the examiner’s assessment will arrive within five working days from filing. Depending on the results in the preliminary assessment, you can then choose to formally continue with your trade mark application by paying the Part 2 fee within five working days.
Continue reading this article below the formMadrid Protocol Application
If you want to register your UK trade mark in at least three international countries, a Madrid Protocol application can be simpler and cheaper than applying directly to each country.
Additionally, international registrations are valid for ten years from the date of receipt of the application.
To apply through the Madrid Protocol, you will need to:
- have an existing trade mark application or a registration in the UK;
- satisfy the ‘entitlement requirement’ in the UK;
- make sure the trade mark is the same on both your UK trade mark application and the international trade mark application; and
- be the owner of the registered trade mark consistent with the UK register.
When using a Madrid Protocol application, you must apply through your ‘country of origin’. That is to say, the UKIPO must certify your application before it forwards it to the WIPO. So, while the WIPO normally issues international registration within three months of filing your application, IP Australia’s subsequent registration of your trade mark can take around eighteen months.
While you may receive international registration, you should note that IP Australia can still decide whether or not to grant trade mark protection. Only once IP Australia grants protection do you gain trade mark protection in Australia.
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Key Takeaways
A trade mark you registered in the UK will not be protected in Australia unless you apply for additional protection. You can apply for trade mark protection in Australia by filing a:
- direct trade mark application with IP Australia; or
- using a Madrid Protocol application if you wish to apply for more protection in more than one member country.
If you need assistance applying for a trade mark, our experienced trade mark 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
The Madrid Protocol allows you to obtain trade mark protection in several countries using a single application. However, you can only gain International Registration in the countries which have joined the system.
IP Australia is the chief government agency whose primary responsibility is to administer intellectual property rights.
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