International trade mark protection: How do I file my brand overseas?

This is the first in a series of articles concerning international trade mark protection. In this article we have outlined the ways in which brand owners in Australia can protect their trade marks internationally.

How can local brand owners register trade marks internationally?

First and foremost, trademark rights are territorial. Therefore, trade marks should be registered in all territories where the mark is, or will be used.

For brand owners in Australia, trade marks can be protected overseas in 2 ways:

  1. as an international application via the Madrid Protocol (but in a limited number of countries); or
  2. directly as national applications in a country or region (such as the European Union).

The Madrid Protocol

What is the Madrid Protocol?

The Madrid Protocol is an international trade mark registration system which allows for a single international registration (IR) to be filed in one or all of the 108 Madrid member countries. The Madrid Protocol is administered by the World Intellectual Property Office in Geneva.

The benefits of an IR include:

  • Cost savings upfront at filing
  • Many of the world’s core markets are now covered by the Madrid Protocol including China, the EU and the US
  • Countries can be added to the IR if the business expands to other countries
  • Once protected in a country, the protection afforded is the same as a national registration
  • Time frames for examination are certain – the Trade Marks Offices of each country must examine applications in 12 or 18 months
  • Single renewal and recording of changes to the IR, such as a change of name

The disadvantages of an IR include:

  • Practices of the Offices of designated countries is different (eg some countries will not permit amendment of goods/services or will not accept certain descriptions)
  • Some countries have second part fees (Japan)
  • Most countries will issue adverse reports and any cost saving at filing is lost by having to appoint a local attorney to respond
  • IR is dependent on basic application/registration for 5 years from filing the IR
  • There are only a handful of amendments that can be made to an IR
  • Series trade marks are not permitted
  • Asian character marks are not permitted

Who can apply for an IR?

The Madrid system is only available to persons or entities who are members of the Madrid Protocol (or who has a commercial establishment in a member country) AND where there is an existing application or registration for the same mark in the home country.

How can I file an IR?

The IR can be filed directly with the World Intellectual Property Office (WIPO) or we can advise on, prepare, and file the IR on your behalf.

National applications overseas

For those countries that are not members of the Madrid Protocol or should you decide not to file via the Madrid system, applications can be filed directly as national applications in each country. In these cases, you will need to retain local lawyers or local IP professionals to file the applications on your behalf. brandU Legal has a network of trusted IP professionals around the globe to assist our clients with their international brand protection.

What next?

If you are considering expanding your brand overseas, make sure you take into account the different methods for registering your trade marks internationally. Contact us should you need further assistance on which filing method is best for your business.