Recently we have posted about trademark registration and how to register a trademark. Trademark rights are awarded on a country-by-country basis and contrary to popular belief there is no such thing as a worldwide trademark or a global trademark registration.
There are a few regions that allow for multiple countries to be included in the one trademark registration, but for the most part it is country by country. (For example, you can register a community trademark, which is one trademark covering all 27 member countries of the European Union).
Essentially there are two ways to achieve international trademark registration:
- Filing of individual applications to each country of interest. Usually this will mean having to employ an agent in each country; and/or
- Filing a single international application via the Madrid Protocol. The Madrid Protocol is an agreement between more than 80 countries that allows the filing of one trademark application and you then simply choose which of those 80 countries are of interest. There are some strict criteria in place to use the Madrid Protocol system from Australia, including:
- Your international trademark must be the same as a trademark you have in Australia and your Australian trademark must remain ‘live’ for 5 years. Any restriction or cancellation to your Australian trademark in that time will see your Madrid Protocol application restricted or cancelled to the same degree;
- The goods/services in your international trademark application must be the same or lesser in scope to those in your Australian trademark;
- The owner must be the same as in the Australian trademark and the owner must be a national of Australia, domiciled in Australia or operate a real and commercial business in Australia.
Where you require protection of a trademark in multiple countries at one time, where they are available under the Madrid Protocol, then using this system is simpler and more cost effective than having to file separate trademark applications to each country. Other benefits of using the Madrid Protocol include the fact that you can add countries at later stages, as they become needed and do not have to start all over again.
Priority available to Australian Applicants when filing overseas
The earliest date you file an application for a particular trademark is your ‘priority date’. Australia is a member of an international agreement that allows applicants a period of 6-months to file international trademark applications and claim their priority date. This basically means that if you file an international trademark application within 6 months of your Australian trademark application being filed the respective overseas offices will treat those applications as though filed at the same time as your Australian trademark – thus providing priority over any other trademark application filed during this time. This provides peace of mind for up to 6-months whilst you determine any overseas needs you may have for your trademark.
Top Tips for International Trademark Registration:
- Determine as early as possible whether International trademark registration will be required for your brand so that appropriate searches can be conducted. Otherwise you may receive registration in Australia but not be able to use the same branding overseas;
- Determine which countries you require as early as possible so that you may utilise the 6-month priority period and can use this time to budget and plan;
- Determine whether you are eligible for the Austrade export marketing grant in connection with your overseas trade and promotions. International Trademark registration expenses may be claimed where appropriate and therefore you may be able to receive a rebate on the costs associated.
Author: Jacqui Pryor, Director of Mark My Words Trademark Services Pty Ltd
Jacqui Pryor has more than 12 years of experience in Australian & International trademark registration services including opposition and infringement matters and has worked as senior trademark consultant over this time, until starting Mark My Words Trademark Services. Jacqui’s passion is with small and start-up businesses; wishing to ensure that businesses of all shapes and sizes have access to professional services in this area. Jacqui would welcome any comments or questions via the website above.