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You may wish to do research before you apply for an international trade mark.
The Basic Trade Mark
Applications using the Madrid Protocol must be based on an existing Australian trade mark application or registration, known as the 'basic trade mark'. Multiple basic trade marks can be listed on the same international application as long as the trade mark and applicant are the same on all basic trade marks.
An international registration is dependent on the basic trade mark for a period of 5 years meaning that any restriction to the IP rights of the basic trade mark/s will also be applied to the international registration.
The applicant of the basic trade mark and the international application must be the same. The trade marks must be identical on both applications, and all the goods and/or services claimed in the international application must be covered by the claims in the basic trade mark.
For further information regarding this process please refer to WIPO’s website which includes useful resources, such as, the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol. This also contains information about the Protocol and the Agreement.
Are you eligible? (Entitlement to file)
As an applicant, you must satisfy at least one of the following criteria:
- be an Australian national
- reside in Australia, or
- own a real and effective industrial or commercial establishment in Australia (a person or organisation with business premises in Australia)
When the application is filed by more than one applicant, each applicant must satisfy at least one of the above requirements. The applicant must also have an application for registration of a trade mark or a registered trade mark within Australia.
How much does it cost?
The cost to apply depends on which or how many countries you want your trade mark to be protected in and how many classes you apply for.
For any international application you will have to pay:
- a basic fee.
- additional fees if your mark is to be displayed in colour. (This fees is not tied to a claim to colour being a distinctive feature of the mark).
- complementary fees (for countries that have not nominated an individual fee). If more than 3 classes are nominated then a supplement fee also applies.
- a fee for each country that has nominated to receive individual fees. (Fees differ from country to country).
- our handling fee of $100, this payment is required to receive a filing date
All fees may be paid either directly to the IB in Swiss francs or to us in Australian dollars at the time of filing.
We have a fee calculator to help you determine the fees due. This includes a set exchange rate that is reviewed regularly.
Is the Madrid Protocol the right option?
The national trade mark systems of Madrid Protocol members still operate independently and you can apply for registration directly to those countries. There may be some circumstances where it is better to apply directly to a country of interest instead of seeking international registration under the Madrid Protocol.
Some points to consider are:
- whether the countries you are interested in are members of the Madrid Protocol
- whether you are eligible to file an international application under the Madrid Protocol
- whether the scope of your Australian trade mark includes all the goods and/or services you wish to protect overseas
For assistance and advice you may wish to use the services of a registered patent or trade mark attorney or an IP Professional.
Searching for similar trade marks before applying
Before applying you may wish to identify any national trade marks in Madrid Protocol countries of interest that are similar to your trade mark, as this may make it difficult to register your trade mark.
Various trade mark offices often provide searchable records of existing trade mark applications and registrations on their websites. There are also companies that provide searching services for a fee and some are internet based.
IB records can be searched for free using the Madrid System (ROMARIN), which contains information about international applications that have been received by the IB from an office of origin and all international registrations.
Last Updated: 23/11/2013