Registering a trade mark in Australia only protects your brand in Australia. If you see your business expanding overseas one day, or if you’re already there, you’ll want to make sure that your trade mark is protected in all the countries you’re interested in or are already trading in. And the process of registering your trade mark overseas at the outset is far more cost-effective than having to rebrand your business overseas because someone beat you to it.
There are two common ways to register an international trade mark. You can apply directly to each country you’re interested in (Local Applications), or you can file one single “Madrid Protocol” registration through the World Intellectual Property Organisation (WIPO), nominating the countries you’re interested in. Either way, you’ll end up with a separate trade mark application in each selected country, so which option is best for you?
Suppose you opt to bring local applications to your countries of interest. In that case, you will need to apply to register your trade mark in each chosen country separately. You will probably have to appoint trade mark agents in each of your selected countries of interest as the applications may need to be filed in the local language or filed by a local registered trade mark agent. The local trade marks office then examines each trade mark application under their respective trade mark laws.
This process can be time-consuming and costly. However, bringing local applications can make economic and practical sense if you want to register your trade mark in only one or two other countries. It is also the only option if the country you plan on trading in is not a member of the Madrid Union. Local applications would also be suitable if you don’t have an Australian trade mark application, either at all, or in different goods or services than those you want protection for overseas.
Just remember that if you need to amend your trade mark application or registration or renew the trade mark at a later stage, you would need to do so directly to each country, which, again, can be time-consuming and costly.
If there are multiple countries you’d like to register your trade mark in, and these countries are members of the Madrid Union, then you can apply for a trade mark registration via the Madrid Protocol. The Madrid Union currently has 109 members, covering 125 countries, so there’s a good chance that your chosen countries will be covered. A complete list of Madrid Protocol countries is available here. This process is generally cost-effective and straightforward. It involves just one application and one set of fees for multiple countries.
You must first have a pending or registered Australian trade mark to apply for a trade mark via the Madrid Protocol. You will then need to file your Madrid Protocol application with WIPO through IP Australia based on your Australian trade mark.
WIPO will then review the application to make sure it complies with the relevant formal requirements. WIPO will certify the application and forward the details to the designated countries if there are no issues. The appropriate trade marks offices in these countries will then examine the trade mark applications under their respective trade mark laws. If there are any objections or formal requirements from any trade marks offices, WIPO will notify you.
It is only if (and when) there are objections or formal requirements that you will have to address that you’ll need to appoint a local trade mark lawyer to respond to the trade mark office in the relevant country. Level Up Legal works with agents throughout the world to deal with objections or further formal requirements. We can assist you by instructing these agents on your behalf if and when such circumstances arise so that you have the convenience of dealing with only one firm concerning all your overseas and local trade marks.
A Madrid Protocol registration is dependent on your Australian trade mark for five years. If within five years of filing the Madrid Protocol application, the Australian mark lapses or is cancelled or removed, you will need to apply to “transform” your Madrid Protocol registration to a local, national application/registration in the individual designated countries.
Suppose you are looking at only getting your trade mark protected in certain regions. In that case, you may also consider filing regional applications, for example, within the EU community or certain African countries.
How Level Up Legal Can Help
Level Up Legal can help you decide which is the best option for your business and assist you with your international trade mark strategy and applications.
Contact us for an initial free chat and to get a fixed fee quote.