Thursday, 10 November 2016

International Trademarks

world map, international

If you operate a Business in Australia and have registered one or more trade marks for trade mark protection in Australia, it is important to be aware that such protection does not automatically protect your trade mark internationally.

Trade marks are enforceable in the jurisdiction where protection has been applied for, granted and current.

If you export goods, trade mark registration in Australia alone will be insufficient to protect your brand internationally.

If you already hold an Australia trade mark, there are two (2) avenues you can follow if you want to extend trade mark protection overseas:
  1. File an application directly in each country you require trade mark protection; or
  2. If the country you require protection is a party to the Madrid Protocol, file a single application through IP Australia nominating those Madrid Protocol countries in which protection is required.
Whether it is better to apply directly to a country of interest instead of seeking international registration under the Madrid Protocol will depend on individual circumstances.

Below we outline further information regarding the application process through the Madrid Protocol.

Madrid Protocol System

The Madrid Protocol System comprises 2 treaties:

Madrid Agreement Concerning the International Registration of Marks, (1892); and
Protocol Relating to the Madrid Agreement (1996).

The Madrid Protocol System is an international system based on the above treaties which facilitates the registration of trademarks in multiple jurisdictions around the world.

Through this system it is possible to make application through a centrally administered body (WIPO), rather than seeking trade mark protection separately in each individual country or region of interest. This reduces time and costs and makes it easier to manage multiple trade marks.

Requests for protection in a Madrid Protocol contracting country are examined according to the trade mark legislation and laws existing in each designated country or region. There are some 94 countries who are members of the so called “Madrid Union”, but this number can change as more members are added.

Length of Registration

International registration is protected for a period of 10 years from the date of registration.
Registration can be renewed every 10 years upon payment of the relevant fees.

Steps for Registration

There are a number of steps that need to be taken in order to obtain registration through the Madrid Protocol:
  1. there must be an existing Australian trade mark registration (or application);
  2. the Australian trade mark must be identical to the international trade mark being sought;
  3. generally, the applicant must be an Australian national and reside in Australia.
It is important to check (through appropriate searches) that there are not already registered in the counties you are seeking registration, trade marks similar to your own, as this may bar your registration. Searching is also important if you intend to market or promote your business, goods or services in another country to make sure you do not inadvertently infringe someone else's IP rights in that country.

Application Costs

The application costs to seek registration of an international trade mark will vary depending on:

which countries (and how many countries) you are applying for;
the number of classes you are seeking registration;
other aspects such as whether it will include colour or some other non standard mark.

If you require further information or assistance registering a trade mark either in Australia or internationally or require intellectual property advice generally, we welcome your enquiry.


The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.

Copyright © Greyson Legal 2016, All rights reserved.

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