Trademarks are generally a matter of national law. This means that registering a trademark in Australia only provides protection within Australia, leaving your trademarks vulnerable overseas.

You can protect your trademarks internationally in two ways:

• Filing an application directly to each country where you want to protect your trademark; or
• Filing a single international application through the World Intellectual Property Organisation (WIPO) under the Madrid Protocol and nominating the signatory countries where you want to protect your trademark.

1. Direct Applications

One way to protect your trademarks overseas is to make separate trademark applications directly to the national trademark offices in each country where you want protection.

Because each application must be made separately, you can tailor each one according to the national requirements of the relevant jurisdiction. This will reduce the risk of processing delays or any formality issues that might hinder registration.

An intellectual property (IP) professional can aid with these trademark registration applications to ensure you comply with each country’s rules and procedures.

2. Madrid Protocol

What is the Madrid Protocol?

The Madrid Protocol is an international treaty in which eligible persons who have filed an application/own a registration in a member state can file a single international application at the WIPO and designate any number of other member states to which their single application is to extend.

Who does the Madrid Protocol apply to?

The WIPO provides a comprehensive list of all countries which are signatories to the Madrid Protocol here.

Most developed nations are members of the protocol including the USA, China and European countries. Countries that have not (yet) joined the Madrid Protocol include Hong Kong, Taiwan, Macao and the United Arab Emirates.

How do I file an International Registration under the Madrid Protocol?

To apply for an International Registration, you must have already filed an application for, or own registration of, the trademark in Australia.

Your International Registration application must meet the following requirements:

• It must be based on an existing Australian trademark application or registration;
• The international trademark and owner must be the same as the Australian trademark i.e. you cannot alter your trademark for the overseas market; and
• The goods and services in your International Application must cover those claimed in your Australian application or registration i.e. you cannot add any goods or services to your application if they are not originally included in the existing Australian application or registration.

For greater simplicity, you can list multiple trademarks in the same international application as long as the trademarks and the applicant are the same.

You must file your international application through IP Australia’s Madrid e-Filing platform, which will check if it meets the formal requirements of the Madrid Protocol. If satisfied, IP Australia will certify your international application, issue a notice of certification and forward your application to WIPO.

WIPO will then examine your application to ensure it meets the formality requirements and that the goods and services are correctly classified. If it is suitable, it will record your trademark in the International Register, issue an International Registration number and notify the trademark offices of each designated country of your International Registration.

Next, the trademark offices in each designated country will examine the International Registration to determine if your trademark can be protected under its local laws. It must make this decision within a set time limit, either 12 or 18 months depending on their own legislation.

If no objections are raised, your trademark will be protected in that country. This will give you the same rights as if your trademark had been registered in that country. International Registrations are dependent on Australian registration for five years after the date of International Registration. This means that if your Australian application is rejected or is later cancelled or revoked within a five year period, the International Registration will be affected to the same extent.

Protection may be refused or limited if your application does not meet the relevant national requirements. You may then appoint a local representative to contest the refusal. Most countries will allow for a review of, or appeal against, a refusal, similar to an adverse examination report in Australia.

What fees apply if I file under the Madrid Protocol?

WIPO charges a basic application fee of 653 Swiss Francs (or 903 Swiss francs for a mark in colour) per International Registration.

There will be a further application fee for each country you select. The national fee is payable per trademark class and differs between countries.

Additional fees may apply if you later want to expand the geographical scope of your trademark protection or modify or renew your trademark.

You can calculate the fees that might apply using the WIPO Madrid Fee Calculator.

How long does an International Registration last?

If granted, International Registration will grant protection in all nominated states for 10 years.

Once this period expires, you can apply to WIPO to renew your trademark very 10 years.

Can I expand my protection overseas at a later date?

Yes, you can request extending protection to additional member states of the Madrid Protocol at any time. This may be relevant if new countries become signatories to the Madrid Protocol or you expand your business and new markets become commercially relevant to your brand.

Any extension will take effect from the date it is recorded in the International Register but protection will expire at the same time as the International Register it relates to.

What are the advantages and disadvantages of filing under the Madrid Protocol?

Advantages of filing under the Madrid Protocol include:

• you can obtain protection in as many countries as you want through a single application;
• your application can be made in English;
• any future amendments or renewals of your trademarks can all be processed through a single forum, the WIPO, meaning you do not need to complete the renewal process for each individual company;
• you can easily make subsequent designations at a later date to protect your trademark in other countries;
• the process may be cheaper than directly applying to each country as filing a single application eliminates the need to pay for translations or hire representatives in each country where you want trademark protection (although this will depend on the geographic scope of your business activities).

Potential disadvantages of filing under the Madrid Protocol include:

• as International Registration is dependent on basic application or registration in Australia for five years, if your basic application is rejected or opposed you can lose protection in all countries at once;
• International Registration still depends on the local laws of each designated country, creating a greater risk of refusals based on formalities;
• protection is only available in countries that are signatories to the Madrid Protocol;
• there may be significant delays in processing your trademark applications;
• enforcing your trademark may be more complicated as some countries might require you to obtain an additional national trademark certificate before you can enforce it.

Conclusion

Whether it is more advantageous for you to register your trademark separately in each country or file under the Madrid Protocol will depend on your unique circumstances. Key factors to consider include the geographic scope of your brand, the countries that you wish to protect your trademark in, and the costs associated with each method.

An experienced IP professional can assist you with determining which option is most suitable to protect your trademarks overseas. If you would like guidance or seek more information, please do not hesitate to contact us.

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