International trade marks
There are two different ways you can seek trade mark protection overseas. You can file an application directly with each country, or you can file a single international application with us nominating the relevant Madrid Protocol countries in which protection is required.
The Madrid Protocol is a treaty that provides for international registration of trade marks. It is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva.
The Madrid Protocol also allows trade mark owners overseas to designate Australia in their international applications.
WIPO's online services
WIPO's online services can help you manage your international trade mark registrations, these include:
- Madrid Real-time Status (MRS) - allows you to access the status in real time of your trade mark documents being processed by WIPO. This allows you to see what is happening to your request at any time in the process.
- Madrid Electronic Alert (MEA) - is a free "watch service" for monitoring the status of certain trade mark registrations. Subscribers can receive daily email alerts when changes are recorded in the International Trade marks register.
- Madrid Portfolio Manager (MPM) - allows holders of international registrations and their representatives to access their international trade mark portfolios, helpful when submitting new requests in the WIPO international trade mark registry.
- Madrid Information Notices - provides information on changes happening within the Madrid Protocol (ie, changes in individual country fees, countries acceding to the Protocol, changes to rules).
As an Australian trade mark owner seeking trade mark protection in other countries that are also members of the Madrid Protocol, you can make a single international application in English. This can be simpler and less expensive than applying directly to each country.
You only need to make a single request to make changes to or renew international registrations.
When your international registration is granted protection in a designated country, your trade mark will have the same protection that would be extended to a national registration in that country.
Another benefit of international registration is the ability to make subsequent designations in other Madrid Protocol countries at a later date.
How long does an international registration last?
Your international registration is protected for a period of 10 years from the date of registration. The date of registration is usually the date the international application was received by the office of origin. Your international registration can be renewed every 10 years upon payment of the relevant fee.
Effect of international registration
From the date of filing of the International Application it shall have the same effect as a national filing in each of the designated Contracting Parties.
Requirements for an International Application
The application must:
- be filed through the office of origin
- be based on a registration or an application for registration filed with the office of origin by the same person, and
- designate the Contracting Parties in which protection is sought
An International Application must be based on an application for registration or on a registration for the same trade mark in the 'home' country. It must be filed through that country's Trade Mark Office, which is known as the office of origin. At least one contracting party must be designated in the International Application. The Country of Origin cannot be designated.
Country of origin
The country of origin is the protocol country where the applicant lives, conducts business or is of that nationality.
WIPO maintains a directory of international IP offices.
Last Updated: 06/12/2012