Registering your trade mark with the Australian Trade Mark Office gives you trade mark protection throughout Australia but it does not protect your trade mark in other countries. There are two methods to register your trade mark overseas.
Key Issues regarding Filing International Trade Mark Applications
The two different ways how Australian trade mark owners can seek trade mark protection overseas are as follows:
- An application may be filed directly to each country – this process can be expensive, complex and would require you to engage trade mark attorneys or lawyers in each country. However, if you intend to sell your product or service in a limited number of countries or you are testing whether your product can be commercialised overseas, this approach may be best option for you; or
- A single international application under the Madrid Protocol treaty designating at least one member country. The Madrid Protocol is a treaty providing for the international registration of trade marks that is controlled by the International Bureau of the World Intellectual Property Organization in Switzerland. The benefit of an international application under the Madrid Protocol treaty is that it permits you to make one application to protect your Australian trade mark in member countries. It is a simpler, quicker and less expensive approach than separate trade mark applications in each country.
There are currently 122 countries that are members of the Madrid Protocol treaty including Australia, Austria, Belgium, Brazil, Canada, China, Czech Republic, Denmark, Finland, France, Germany, Greece, Hungary, India, Ireland, Israel, Italy, Japan, Luxembourg, New Zealand, Norway, Poland, Portugal, Russia, Singapore, Spain, Sweden, Switzerland, Turkey, the United Kingdom and the United States of America.
An international application under the Madrid Protocol treaty can be made through the Australian Trade Mark Office if you have an Australian trade mark registration or application. The international application must be exactly the same as the Australian trade mark registration or application.
The cost of an international application will depend on both the number and the particular countries designated and the number of classes of goods or services covered. International application fees cover both the filing and registration of the trade mark.
As has been demonstrated, there are many complex issues to consider prior to filing an international trade mark application. To speak to a trade mark specialist about these matters, call Trade Mark Direct today on 1300 002 210 or email us at firstname.lastname@example.org.
Key words: international trade mark, Madrid Protocol, brand protection and trade mark application.
Disclaimer: The content of this blog is intended to provide a general guide to the subject matter. This blog should not be relied upon as legal advice. Specialist advice should be sought about your specific circumstances.