International trade marks
An International Trade Mark application is a useful way to apply for a Trade Mark in a number of different countries simultaneously.
An Australian trade mark provides protection only within Australia.
There are two different ways Australian trade mark owners can seek trade mark protection overseas:
- An application may be filed directly to each country, or
- A single international application can be filed through IP Australia nominating the Madrid Protocol countries in which protection is required.
Whichever option you choose, you will still end up with separate trade mark applications in each country.
The Madrid Protocol
The Madrid Protocol is a treaty that provides international registration of a trade mark. It is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva.
It is simply a method of facilitating the filing of trade mark applications in a number of countries simultaneously. All requests for protection in a Madrid Protocol contracting countries are examined according to the trade mark legislation and laws existing in each designated country.
WIPO provides a full list of member countries that an International application can cover.
The Madrid Protocol also allows trade mark owners overseas to designate Australia in their international applications.
Requirements for international applications
For an international application to be considered by us:
- You must have an application and/or a registration in Australia on which to base your application
- You must meet entitlement requirements within Australia
- The mark on the international application must be identical to that contained on the Australian application/registration
- The goods and services in your international application must be covered by the claims in the Australian application/registration
- The applicant on the international application must also be the applicant on the Australian application/registration
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 fees.
Benefits of the Madrid Protocol
The Madrid Protocol allows, in one request, to extend the protection of your Australian Trade Mark Application/Registration into any of the contracting countries of the Madrid Protocol. This can be simpler and less expensive than applying directly to each country.
There is no requirement to have an address for service within the contracting countries at time of filing.
You only need to make a single request to make changes to or renew international registrations.
If 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.
Last Updated: 27/3/2014