Australia became a signatory to the Madrid Protocol back in 2001. The Madrid Protocol gives applicants the ability to register international trade marks through one streamlined process. If you are operating, or intend to operate, a business outside of Australia, this article will shed light on the process and steps for international trade mark applications through the Madrid Protocol.

What is the Madrid Protocol?

The Madrid Protocol is a treaty that enables businesses or individuals to apply for the international registration and management of their trade marks. The Madrid Protocol, although administered by the World Intellectual Property Organization (WIPO), allows applicants to commence their application through Intellectual Property (IP) Australia. It is then important to note that not all countries are signatories to the Madrid Protocol, and you are unable to register a trade mark for non-member countries.

What are the benefits of registering through the Madrid Protocol?

The Madrid Protocol allows applicants to register in multiple countries through one application. This means you do not have to coordinate separate country applications that may end up being costly and burdensome to manage. Once your trade mark application is successful, you may request at a later stage an extension of protection (also known as a ‘subsequent designation’) in additional member countries. It also offers the possibility for trade mark owners to simplify the management of their international trade marks. For example, changes or renewals can all be made through one application.

How can I register through the Madrid Protocol?

To be eligible to register through the Madrid Protocol, the applicant must have an existing trade mark or a pending application for their desired trade mark. What this means is that you cannot register a trade mark without first lodging an application in Australia. Once you lodge your application through the Madrid Protocol, it is sent to WIPO and the individual member country is notified. The member country then processes the application according to their trade mark laws.  The Madrid Protocol then introduces the mechanism to initiate international trade mark applications. But, it does not incorporate the trade mark laws of individual countries.

How do my international trade marks relate to my Australian trade mark?

Your Australian trade mark (the ‘basic mark’) is connected to your International trade mark and this connection remains for five years. If your domestic trade mark application has not been approved, or if your trade mark has received oppositions and led to the cancellation of your trade mark, your international trade marks will be affected.

Conclusion

The trade mark application process can be complex, especially if you are interested in registering in other countries. Although the Madrid Protocol aims to simplify the process, there are specific details in terms of filing and certifying applications that may cause delays in the process or may lead to your application being denied. Our specialist team of trade mark lawyers at LegalVision can assist in guiding you through the process of lodging your international trade mark application.

Kristine Biason

Next Steps

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