Before you apply
You need to do your research before you apply for an international trade mark.
What you need to know
Applications for international trade marks using the Madrid Protocol must be based on an existing Australian trade mark application or registration, known as the 'basic trade mark'.
International trade marks are administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
An international registration is dependent on the basic trade mark for a period of 5 years.
The owner of the basic trade mark and the international application must be the same. The trade marks must be identical, and all the goods and/or services claimed in the international application must be covered by the claims in the basic trade mark.
WIPO publishes the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol. It contains information about the Protocol and the Agreement, outlines the procedures and also provides information on each contracting party and a copy of the forms required.
Are you eligible?
To apply for an international trade mark using IP Australia as the Office of Origin, you must satisfy at least one of the following criteria. As an applicant you must:
- be an Australian national
- reside in Australia, or
- own a real and effective industrial or commercial establishment in Australia
When the application for an international registration 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 with us.
Points to consider
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 of the points you need 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 specific assistance and advice you can contact an IP professional.
Searching
Before you apply for an international registration, try to identify any national trade marks in Madrid Protocol countries of interest that are similar to your trade mark, as this may cause a conflict.
Search the trade mark records in the relevant countries as well as the International Bureau (IB) records.
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). Madrid Express contains information about international applications that have been received by the IB from an office of origin and all international registrations.
Last Updated: 06/12/2012
