International trade mark protection – How, what and why.

Why do I need to protect my trade mark overseas?

First and foremost, trademark rights are territorial. Therefore, trade marks should be registered in all territories where the mark is, or even will be used. Put simply, delay in filing your trade mark may result in having to re-brand in some core countries. This can be a time consuming and costly process and can be avoided with a proper trade mark filing strategy in place.

How can local brand owners register trade marks internationally?

Trade marks can be protected internationally in 2 ways:

  1. as an international application via the Madrid Protocol designating at least one country; or
  2. directly as national applications in a country or region (such as the European Union).

What is an international registration via the Madrid Protocol?

An international registration (IR) via the Madrid Protocol is a single application which can cover one or all of the 112 member countries. For most member countries, one set of fees is paid which includes both the filing fees and registration fees.

An IR requires a basic application or registration in the home country for the same mark and for some or all of the goods/services covered by the basic mark before it can be filed.

What are the benefits of an international application via the Madrid Protocol?

The benefits of an IR include:

    • Cost savings upfront at the time of filing
    • Many of the world’s core markets are now covered by the Madrid Protocol
    • Countries can be added to an existing 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 Trademarks 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:

    • the practices adopted by international Trade Mark Offices differ (eg some countries will not permit amendment of goods/services or will not accept certain descriptions)
    • Some countries have second part fees (Japan, Brazil)
    • It is usual for most countries to issue objections report and any cost saving at filing may be lost by having to appoint a local attorney to respond
    • IR is dependent on basic application/registration for 5 years from filing the IR. If the basic application/registration fails during that period so too will the IR
    • There are only a handful of amendments that can be made to an IR

Who can file an IR via the Madrid Protocol?

Provided you:

  1. have a real and effective commercial or industrial establishment in the home country; and
  2. have an existing application or registration for the same mark (known as the basic application or registration) in the home country;

you will qualify to apply for an IR via the Madrid Protocol.

How can I file an IR via the Madrid Protocol?

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.

What if I want to file applications for my trade mark in non-Madrid Protocol countries?

These applications must be filed directly as national applications in each country usually through local lawyers. brandU Legal has trusted associated around the globe to assist with international brand protection.

Where to File – First to use vs. first to file countries

Of course, it may not be feasible to file your trade mark in every country but as a starting point you should be thinking about trade mark registration in countries where you will be using the mark including where the goods will be manufactured, distribute and/or where you are intending to license the use of the mark to a third party.

There are a number of countries which are referred to as “first to file” countries. In these countries, trade mark rights are acquired only on registration of a trade mark. We recommend that you priorities first to file countries as part of your trade mark strategy to avoid “trade mark squatting”.

These countries include (this list is not exhaustive):

  • Many EU countries including France and Germany
  • UK
  • South Korea
  • Japan
  • China

“First to use” countries on the other hand provide trade mark rights to the first person to use the mark and therefore these countries allow a trade mark owner to take action against unauthorised use of an unregistered mark.

First to use countries include (this list is not exhaustive):

  • United States
  • Canada
  • Australia
  • New Zealand
  • India
  • Hong Kong
  • South Africa

What next?

If you are thinking about expanding your product or service offering to overseas markets, it is essential that you think about trade mark registration in the required countries as soon as possible.

brandU Legal for has extensive experience with brand protection in Australia and throughout the world and can assist you with any questions you may have about the protection of your brand. Please contact us for further information.

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