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Trade Marks International
Trade Marks Frequently
Asked Questions
Frequently Asked Questions
Amendments
Basic
Trade Mark
Central
Attack
Certifying
Process
Change
of Ownership
Claimed
Interest
Classification
of Goods and/or Services
Communication
with the International Bureau
Communication
with a Designated Country
Communication
with your Office of Origin (IP Australia)
Convention
Claims
Costs
Deferment
Designated
Countries
Divisional
applications
Eligibility
Enforceability
of Rights
Expedites
Extensions
of Time
Filing
an International Application with IP Australia
Forms
Indexing
Legislation
Madrid
Express
Nomination
of Agent
Non
Use Action
Opposition
to International Registrations Designating Australia
Protection
Renewal
Replacement
Searching
Series
Trade Marks
Subsequent
Designation
Timeframes
Transformation
Translation
Types
of Marks
Q. Can I amend my international
registration at any stage?
Once the IB has registered your trade mark, you cannot extend
the goods and/or services claimed, and you cannot make any changes at all to
the mark. You can however change your name and address details at any stage,
and request a limitation of the goods and/or services to narrow the claim.
Q. How long do I have to make changes to my international application
before it is registered?
You would need to make any changes to your international application
before it is certified by IP Australia and sent to the IB.
Q. What is the basic trade mark?
The national application or registration on which the international
application or registration is based. You must have your basic trade mark in
the country through which you are filing your international application. The
owner of the basic trade mark and the international application must be the
same, the trade marks must be identical, and the goods and/or services covered
by the international application must be included in the basic trade mark.
An international registration is dependent on the basic trade
mark for a period of 5 years. Any restriction or cancellation of the basic trade
mark resulting from an action that started within this period can also impact
on your international registration.
Q. Can I have multiple basic trade marks for one international
application?
Yes. You can have as many basic trade marks as you require, as
long as the owners are the same, and the marks are identical. For example; if
you want to cover goods and/or services in more than one class in your international
application, multiple basic trade marks would be necessary where you have trade
marks applied for prior to the introduction of multiclass applications under
the Trade Marks Act 1995.
Q. Should I have a basic trade mark that is an application
or a registration?
You can have either, or in the case of multiple basic trade marks,
a combination of both, however it will depend on your individual circumstances
and the likelihood of success of your application because of the 5 year dependency
period. Even if you wait until you have a registration, the 5 years still applies,
and someone could take non use action against your trade mark if you haven't
been using it.
Q. What happens if I file my international application based
on a basic application and that application is restricted during examination,
or fails to reach registration?
The international registration will be cancelled to the same
extent as any restriction to the basic trade mark. This is because the examination
process for your basic trade mark will have started within the 5 year dependency
period. For example; if your basic trade mark application and dependent international
application are filed for the class 9 heading, and your basic is restricted
to telephones during examination, the international registration will also be
restricted to telephones. The IB will notify all designated countries of the
restriction.
Q. What happens if I have a divisional of my basic trade mark
within the 5 year dependency period?
The divided application becomes another basic trade mark, as the
goods and/or services covered by the international registration are now covered
by two national trade marks. It should be noted that if the divisional application
is restricted or lapses during examination, the result will also affect the
international registration.
Q. Who is responsible for notifying the IB of a restriction
or cancellation of the basic trade mark?
The onus is on the Office of Origin. IP Australia has developed
a computer program to monitor basic trade marks for any changes that need to
be notified to the IB.
Q. Do I have to keep my basic trade mark after the 5 year dependency
period?
No. Any change to the basic trade mark which resulted from an
action starting after the 5 year period has no impact on the international registration.
Q. Can I add other basic trade marks to my international registration
at a later date to expand the goods and/or services covered?
No. Once the IB has registered your international application
you cannot expand the goods and/or services claimed.
Q. What does 'central attack'
mean?
Central Attack is any action against the basic trade mark during
the 5 year dependency period which ultimately leads to the restriction or cancellation
of the international registration.
Q. Are there any options if my international registration is
restricted or cancelled because of central attack?
You have three months in which to apply directly to each of your
designated countries to transform your international registration into a national
application/registration. The process and fees for transformation can vary in
each designated country.
Q. How do you 'attack' an international registration after
the 5 year dependency period?
You would need to challenge the protection granted in each designated
country under the national legislation of those countries.
Q. What is the certifying process?
When you file an international application the Office of Origin
(IP Australia) must check that the details on the basic trade mark accord with
the details on the international application form before sending it to the IB.
For example; the owners must be the same, the trade marks identical, the goods
and/or services must be covered by the basic trade mark/s, and any other written
descriptions must be the same. Certification does not mean that the details
are correct, simply that they are the same.
Q. Can there be any differences between the trade mark on the
international application and the basic trade mark - for example; can I remove
'made in Australia'?
No. The trade marks must be identical. When you are filing your
national application and you think it may be the basic trade mark for an international
application, you should ensure that you are only including trade mark material
in your representation of the mark.
Q. What if my international application cannot be certified?
If IP Australia cannot certify your application we will contact
you as soon as possible and let you know if/how the problem may be overcome.
You will need to respond quickly as you may risk losing your filing date.
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Q. How do I change the owner of my international
registration?
Change of ownership requests can be made directly to the IB. You
only make one request and pay one fee, and the IB will notify all designated
countries. You can also lodge your request and pay the fee in AUD through IP
Australia if this is your Office of Origin.
Each designated country can refuse to accept the change of ownership
in that country if they have particular national requirements which have not
been met.
Q. Can I change the ownership at any stage or do I have to
wait until protection is extended in all designated countries?
You can change the ownership of your international registration
at any stage.
Q. Is there any restriction on who the new owner can be?
Yes. The new owner of the international registration must be eligible
under the Protocol. This means they must live in a Protocol country, be a national
of a Protocol country, or have a real and effective commercial or industrial
establishment in a Protocol country. It does not need to be the same Protocol
country that you meet the requirements in.
Q. Can I assign the international registration and not the
basic trade mark or vice versa?
Yes. The international registration and the basic trade mark
can be independently owned. If however you are within the 5 year dependency
period and you assign your basic trade mark, you will need to ensure the new
owner of the basic trade mark will maintain the registration so that there is
no adverse impact on your international registration.
Q. Can I have a partial change of ownership for my international
registration?
Yes. You can have a change of ownership for some of your countries,
and/or some of your goods and/or services. If this happens the new owners part
of the international registration will be given a separate number (the international
registration number with a letter at the end). The IB will notify both parties
when renewal is due.
Q. Is it possible to record a claim of
interest for an international registration?
This depends on the national legislation of each designated country.
For IRDAs, and international registrations protected in Australia, IP Australia
allows claims of interest to be recorded.
Q. What goods and/or services
can I claim on my international application?
Your international application can only claim the goods and/or
services included in your basic trade mark/s. You do not need to use the exact
wording, however the claim cannot be any broader than that which is on your
basic trade mark/s.
Q. Can I have a multiclass international application even
if one of my designated countries does not have a multiclass system?
Under the Protocol legislation, all member countries have to allow
multiclass applications even if this is not in accordance with their national
system.
Q. Can I file an international application with different specifications
for each designated country?
Yes, as long as the goods and/or services are included in the
basic trade mark/s.
Q. What happens if a designated country disagrees with my specification?
This is unlikely. The IB checks classification prior to despatching
the designations, and their determinations are rarely challenged by the designated
countries. In fact, the Madrid Protocol states that the IB gets the final word
in any classification matter. Any discrepancies between a designated country
and the IB would be addressed prior to contacting the holder.
Q. Can I add classes to my international registration at a
later stage?
No, once your international application is filed you cannot expand
on the goods and/or services being claimed.
Q. Can I communicate with the IB
electronically via email?
The IB can be contacted electronically through their website
at www.wipo.int/madrid/en/contact.html
Q. When will the IB send me a certificate of registration?
The IB issues the certificate of registration after they have
checked that the formalities, classification and fees for your international
application are in order. The certificate will be sent directly to the holder,
or their representative (if one has been nominated).
Q. Will I get another certificate from the IB once my designated
countries have extended protection?
No, however some countries, including Australia, will send notification
that protection has been extended in their country.
Q. How do I open an account with the IB?
You need to make a written and signed request to WIPO and include
payment of an initial deposit. Full details of this are available on WIPO's
Internet site under "Conditions for Opening, Using and Closing a Current
Account at WIPO".
Q. Can I check my application details have reached the IB for
myself?
Yes. You can search Madrid Express on the WIPO
Internet site to locate any applications that have been received by the
IB but have not yet been registered.
Q. Am I responsible for notifying the IB if there is a restriction or cancellation
of my basic trade mark?
No. It is the responsibility of the Office of Origin to monitor basic trade
marks and notify the IB if there is any restriction or cancellation within the
5 year dependency period.
Q. How will I receive any refusal
notifications from my designated countries?
If a designated country issues a provisional refusal, they must
notify the IB, and the IB will forward it to you or your agent. If you wish
to respond to the refusal, you must deal directly with the trade mark office
of the designated country. They may also request that any submissions be made
through a local address for service or legal representative depending on their
national legislation.
Q. Do I receive anything from my designated countries once
protection has been extended?
The requirement is for the IB to be notified, however some countries,
including Australia, also advise the holder/agent directly.
Q. Will I be able to see details
of my international application on the IP Australia database?
No. International applications filed through IP Australia do
not have an impact in Australia, so are therefore not captured onto the database.
Q. Will I be notified when my international application has
been certified and forwarded to the IB?
A letter will be sent to you or your agent advising that this
has occurred.
Q. Will IP Australia forward any subsequent correspondence
relating to my international application to the IB on my behalf? For example;
information for fixing irregularities.
Yes. If you have filed your international application through
IP Australia, we will also forward any subsequent correspondence on you behalf.
Q. Can I have a convention claim on
my international application?
Yes. A convention claim may be made from the basic application
provided that the application was filed not more than six months before the
date of the international registration. Priority may also be claimed from an
application filed with an Office other than the Office of Origin. For example,
from an earlier application from which the basic application in turn claims
priority; provided that the date claimed is not more than six months before
the date of the international application being filed.
Q. Can I have multiple convention claims on my international
application?
Yes, if your goods and/or services are covered by more than one
application/registration, and all meet the requirements of being within six
months of the first filing of that trade mark.
Q. Can I claim convention priority for only some of the goods
and/or services on my international application.
Yes. You can have partial convention claims for example where
you have multiple basic trade marks, but only one of them is within the six
months timeframe, or when the priority claims cover only some of the goods and/
or services.
Q. What are the fees for filing an international
application?
The international application fee consists of:
Basic fee - 653 Swiss francs for up to three classes, or
903 Swiss francs where there is any colour in the representation of the trade
mark.
Supplementary fee - 73 Swiss francs for each extra class
over three classes. If all designated countries require individual fees, the
supplementary fee does not apply.
Complementary fee - 73 Swiss francs for each designated
country, unless the country requires an individual fee.
Individual fee - A country may nominate to have an individual
fee rather than their share of the supplementary and complementary fee, however
this fee can be no higher than the equivalent national filing and registration
fees.
Handling Fee - The handling fee of 100 Australian dollars
must be paid to IP Australia at the time you file the international application
form. This fee is to cover the costs associated with checking, certifying and
transmitting your international application to the IB. IP Australia cannot certify
your international application if the handling fee is not paid.
Q. How do I work out what fee to pay?
If you are paying the IB directly you use the WIPO fee calculator
on their Internet site to work out the amount
in Swiss francs.
If you are paying through IP Australia you use the fee calculator
on our Internet site to work out the amount in Australian dollars.
Q. How do I pay my international application fees?
You can pay the IB directly in Swiss francs or you can pay through
IP Australia in Australian dollars. Payment to IP Australia may be made by:
credit card;
cheque;
money order;
cash or EFTPOS (over the counter only); or
electronic funds transfer.
Cheques should be made payable to IP Australia. To find out how to pay, go to our Making
a Payment page.
We also accept payment in Australian dollars for other IB fees including renewal
fees, subsequent designations, changes to the name and address of a holder and
the transfer of goods/services from one class to another as the result of an
irregularity notice..
Payment to the IB may be made by:
- debit to a current account with the IB;
- payment or transfer to the Swiss postal check account of the IB, No. 12-5000-
8, in Geneva;
- transfer to the IB's bank account No. 487080-81 with the Swiss Credit Bank,
Geneva;
- a banker's cheque; or
- payment in cash at the IB.
The purpose of the payment to the IB must be indicated, together with:
- a copy of the mark to which the payment relates,
- the name of the applicant and, as far as possible,
- the number of the basic application or registration concerned.
Q. How will I know if there is a change in the fees?
Any changes to the fees payable to the IB must be notified three
months before they come into effect. Countries charging individual fees can
change the fees if the exchange rate fluctuates 5% or more, and the IB can change
fees if the exchange rate fluctuates 10% or more.
Q. What happens if I don't pay the correct fee?
When IP Australia receives your international application you
will be advised if we believe the fee is incorrect, however if just the handling
has been paid, certification can still occur and your application will be forwarded
to the IB. The IB will notify you of the correct fee and allow you three months
to pay without losing your filing date.
If the fee has been underpaid and you have been contacted by the
IB, you can either pay them directly in Swiss francs, or pay the equivalent
amount in Australian dollars to IP Australia.
Q. What is the fee for subsequent designations?
This depends on the country you are subsequently designating.
The same complementary, supplementary and/or individual fees will apply, however
the basic fee is reduced. Use either the WIPO fee calculator (for Swiss francs)
or IP Australia's fee calculator (for Australian dollars) to work out the fee.
Q. What is Australia's fee for an IRDA?
Australia has nominated an individual fee, and it is $450 for
each class nominated in the application. This is the equivalent of our national
filing and registration fees.
Q. What are the fees for maintenance activities such as change
of ownership and renewal?
You should refer to either the WIPO fee calculator or the IP Australia
fee calculator to determine renewal fees, depending on whether you want to pay
in Swiss francs or Australian dollars. For all other fees, a schedule of fees
is available on the WIPO web site. This lists the fees required (in Swiss francs)
for all administrative tasks including change of ownership.
Q. Can you defer an IRDA?
Yes. The national timeframes and requirements for deferment apply.
Q. Can I nominate Australia on my
international application if it is being filed with IP Australia?
No. You can never designate the Country of Origin in the international
application. You must however already have your basic trade mark in the country
you are filing through.
Q. Can you withdraw one or more of your designated countries
after protection has been granted?
Yes. You can withdraw countries at any stage, including at renewal
time.
Q. Does a refusal in one designated country impact on the others?
No. Each country will process your designation according to their
own national legislation. It is therefore possible to end up with protection
for different goods and/or services in different countries.
Q. Do I need to provide a declaration of use for my designated
countries?
This will depend on what the national requirements are in the
countries you have designated. For example; as shown on the international application
form, by designating the UK or Singapore on your form, you are stating that
you intend to use the trade mark in those countries. A declaration of intention
to use the mark is required when designating the USA. The official form can
be found on the WIPO web site and must accompany any international application
or subsequent designation in which the USA is designated.
Q. Is it possible to have a divisional
of an international registration?
The Protocol has no provisions for divisional applications, therefore
they are not allowable.
Q. What is the Guide to the International Registration of
Marks under the Madrid Agreement and the Madrid Protocol?
This is a WIPO publication which contains information about the
Protocol and the Agreement. It outlines the procedures and also contains information
on each contracting party and a copy of the forms required. It is available
on the WIPO Internet site or by subscription
from WIPO.
Q. Has the Australian Trade Marks Manual of Practice and
Procedure been updated to include Madrid Protocol information?
Yes. Part
60 has been updated to include Madrid Protocol information.
Q. Who is eligible to file
an international application through IP Australia using the Madrid Protocol?
An applicant can be either a person or a legal entity, and must
either live in Australia, be an Australian national, or have a real and effective
commercial or industrial establishment in Australia. They must also have an
existing trade mark application or registration with IP Australia. If you claim
to live in Australia or have a real and effective commercial or industrial establishment
in Australia, you are required to provide the address on the form.
If there are joint applicants all must meet the eligibility requirements.
Q. Can I meet the eligibility requirements in one country and
have my basic trade mark in another?
No. To be eligible to use the Protocol you must meet both requirements
in the same Protocol country.
Q. Who decides what a real and effective industrial or commercial
establishment is for international applications filed through IP Australia?
If you claim to have a real and effective industrial or commercial
establishment, you must make that claim on the form and provide the address
of that establishment. IP Australia will not investigate the legitimacy of the
claim made on the form unless there is an obvious error. It is however the responsibility
of the applicant to ensure that all claims are valid, as proof can be requested
if necessary.
Internet usage or a warehouse facility do not constitute a real
and effective commercial or industrial establishment.
Q. Who checks the legitimacy of eligibility claims for international
registrations that have designated Australia?
The claims made on international applications are checked by each
Office of Origin. When IP Australia receives an international registration that
has designated Australia, we do not check the legitimacy of eligibility claims.
Q. Can I challenge an international registration on the basis
that the applicant was not eligible to file that application?
You cannot challenge an international registration at the IB level,
however you may be able to take action either against the basic trade mark,
or each of the designations, depending on the national legislation that exists
in those countries.
Q. What rights do you have once
the international registration certificate has been issued, but before protection
has been extended in each designation?
The issuing of the international registration certificate can
be seen as the equivalent of a pending application in each of your designated
countries. The level of protection an application in each country offers will
depend on the national legislation.
Once protection is extended in a designated country it will have
effect from the date of filing the international registration. The rights given
by protection in a designated country can be no less than if you had registered
your trade mark via the national route.
Q. Can I take infringement action in my designated countries
once protection has been extended?
This will depend on the national legislation in each of your designated
countries. Any infringement actions you take must meet those local requirements.
Q. Who will examine IRDAs?
IP Australia has set up an international section within its examination
area who are responsible for the examination of IRDAs.
Q. At what stage during the examination process do I need an
address for service in Australia?
If there is a provisional refusal based on examination or opposition
and you wish to make submissions in relation to that refusal, you will need
to have an address for service in Australia.
Q. What information is provided with a provisional refusal
based on examination?
IP Australia will include a copy of the relevant legislation,
any evidence supporting the refusal, the goods and/or services that are affected,
and any ways in which the refusal might be overcome. The report will also state
the date by which problems must be overcome and the requirement for an address
for service if making representations on the refusal.
Q. How long do I have to overcome a provisional refusal based
on examination?
The same timeframes apply to an IRDA as apply to our national
applications, therefore you have 15 months from the date of the provisional
refusal to attempt to overcome the problem. This time is extendable if you make
a request meeting extension of time requirements and pay the appropriate fee.
Q. What happens at the end of the 15 month period allowed
if I have made no submissions in relation to the provisional refusal based on
examination?
If there was only a partial refusal, that is, it only related
to some of the goods and/or services nominated, there will be automatic acceptance
and advertisement of those goods and/or services that were allowable. If there
was a full refusal, that is, it related to all of the goods and/or services,
no protection will be afforded to the Australian designation. In both cases,
a 'notice of final decision' will be sent to the IB.
Q. Can I request expedited examination
of my national trade mark if it is going to be the basis for an international
application?
Yes. You must still make the request for expedite supported by
a statutory declaration, however this will be a valid reason for expedition.
Q. Will international registrations that have designated Australia
be expedited?
Only if the holder of an IRDA requests expedition and has valid
grounds and, as with our national practice, IRDAs which have a convention priority
claim will be automatically expedited.
Q. Can I apply for extensions of time
for my IRDA?
Yes. You need to meet our national legislation requirements,
and the same timeframes and fees apply.
Q. What is the filing date for my international
application?
The filing date will be the day you lodged your application with
IP Australia providing the IB receives your application and our certification
within two months of that day. If there is a problem during certification, you
will need to respond very quickly as there is a risk of losing your filing date.
Q. Can I simultaneously file my international application
and my basic trade mark application?
Yes, however you need to consider the impact that the 5 year
dependency period may have if your basic application does not reach registration.
If you do simultaneously file, IP Australia will complete the basic trade mark
details on the international application form once your basic trade mark has
been allocated a trade mark number.
Q. What receipt information do I get when I file an international
application form with IP Australia?
When your international application is received you will be sent
a receipt for the amount of money paid, and shortly after you will receive a
letter stating that your international application has been certified and forwarded
to the IB.
Q. Can I lodge my international application form electronically?
No. IP Australia does not have the facilities to accept international
application forms electronically at this stage.
Q. Can I have an 'oversized' representation of my trade mark?
No. The IB requires that your trade mark fit into the 8cm x 8cm
square on the application form. You need to take care if your basic trade mark
is larger than 8cm x 8cm, because if it is reduced and elements are lost, IP
Australia will not be able to certify that it is the same mark.
Q. What application form do I need to file
an international application, and where can I get it from?
You need to use the WIPO form MM2E for applications governed exclusively
by the Protocol, which can be obtained from the WIPO
Internet site, our Internet site, IP Australia State Offices or our Customer
Support Centre.
Q. Where do I get other forms from - for example to change
the ownership of my international application, or to appoint a representative
with the IB?
All forms can be found on the WIPO
Internet site
Q. Can I create my own application form?
Yes, but you must use the same format and headings as on the official
WIPO form, and even include the sections for information which is not applicable
to your particular application.
Q. Will Australia use the Vienna classification
system to index device marks on IRDAs?
No. Although IRDAs will be sent from the IB with Vienna classification,
IP Australia will re-index device marks using our existing processes, so you
will not need to change the way in which you search the database.
Q. Are there countries that are
party to both the Madrid Agreement and the Madrid Protocol?
Yes. As Australia is only a member of the Protocol, you are only
able to designate Protocol countries on international application forms filed
through IP Australia.
Q. Why did Australia join the Protocol and not the Agreement?
The protocol better suits national processes. Communications can
be in English and the Protocol provides the option of an 18 month period to
issue refusals and notify the IB if refusal based on opposition may occur after
that time. In addition, the Protocol allows international trade mark applications
to be based on national "applications", not just "registrations".
Q. What is Madrid Express?
Madrid Express is an electronic database maintained by the IB.
You can search Madrid Express on the WIPO Internet
site to access any international applications that have been received by
the IB but have not yet been registered. This means that any designated countries
will not have been notified, so you will not be able to find the records on
their national databases. Madrid Express also contains the details of all trade
marks that have been allocated an international registration number (IRN) and
placed on the international register.
Q. Does Madrid Express show you the goods/services claimed
in each designated country?
If a designated country has a claim which varies from the international
application it will be annotated as such.
Q. Is there any restriction on who
I can nominate as a representative?
The IB has no restriction on who can be your representative to
deal with them, however if you are appointing a representative in your designated
countries it will depend on what their national legislative requirements are.
Q. How do I nominate an agent after my international application
has been filed?
An agent can be nominated by a written request from the applicant/holder
or from the newly appointed representative. This can be forwarded directly to
the IB, or, as a customer service, through IP Australia.
Q. When do I need a representative in my designated countries?
This will depend on the countries you have designated, however
the Protocol allows for a local address to be required if there is any refusal
during the examination or opposition processes.
Q. When does the holder of an IRDA need a representative in
Australia?
An address for service in Australia is required if the holder
of an IRDA wishes to make submissions in relation to a provisional refusal based
on examination or a provisional refusal based on opposition. An Australian address
for service is also required when requesting transformation of an IRDA into
a national application/registration, or when replacement of a national registration
is requested.
Q. Can I file a non use action against a
protected international trade mark?
Non use actions can be taken under our national legislation.
This means that the same fees and timeframes apply when taking non use action
against protected international trade mark as would apply if taking action against
a national registration.
Q. How do I file non use action against a protected international
trade mark if there is no address for service in Australia?
A non use application is filed with IP Australia only. If the
non use is opposed, the Notice of Opposition must be filed with IP Australia
and served on the non use applicant's Australian address for service. After
the notice of opposition has been filed and served, the national requirements
relating to timeframes and fees apply. This includes all other opposition documents
being served to Australian addresses.
Q. What happens if I successfully take non use action against
a basic trade mark?
If the action started within the 5 year dependency period, the
international registration will be restricted or cancelled to the same extent
as the basic trade mark. If you are outside this period the non use action will
not affect the international registration.
Q. Can I oppose an IRDA?
Yes. National timeframes and fees apply to the opposition of IRDAs.
As with national trade marks, acceptance is advertised in the Official Journal
of Trade Marks, and you have a period of three months to file a notice of opposition.
Q. What happens to the IRDA if my opposition is only partially
successful?
The IRDA will be protected for the goods and/or services that
remain. IP Australia has to notify the IB so that the International Register
can be updated to reflect the restriction to protection in Australia.
Q. Can I request an extension of time for filing my notice
of opposition against an IRDA?
Yes, if you meet the provisions of Trade Mark Regulation 14A.30,
and meet the timeframe and fee requirements. An extension of time request will
not be recognised by the IB as a provisional refusal based on opposition; the
actual notice of opposition needs to have been filed.
Q. What does it mean when a designated
country gives me protection for my international registration?
Under the Protocol, the protection extended to your international
registration must give you the same rights in that country as would be afforded
to a national registration.
Q. Is it possible to have protection for different goods/services
in different countries?
Yes. As each country deals with your designation according to
their national legislation, it is possible that at the end of the process you
could have different protection in different countries, even though your international
registration will remain unchanged.
Q. What is the renewal date of my international
registration?
International registrations last for a period of 10 years before
needing to be renewed. The initial 10 year period will start from the date of
filing your international registration, as recorded by the IB. An address for
service in Australia is required if the holder of an IRDA wishes to make submissions
in relation to a provisional refusal based on examination or a provisional refusal
based on opposition. An Australian address for service is also required when
requesting transformation of an IRDA into a national application/registration,
or when replacement of a national registration is requested.
Q. Who notifies me that renewal is due, and when will this
occur?
The IB will notify you or your agent (if nominated) six months
before the expiry date of your international registration.
Q. Who do I pay my renewal fees to?
You can pay renewal fees directly to the IB (in Swiss francs)
or to IP Australia (in Australian dollars).
Q. What happens if my renewal payment is late?
The IB allows for a six months period of grace on renewal payments,
however if you pay within this period there is substantial financial penalty.
Q. Can I renew only some of the countries that were designated?
You can renew whatever countries you are still interested in having
protection for.
Q. How will IP Australia show if an IRDA has been renewed or
not?
The database record will be updated once the IB notifies us if
the international registration has been renewed or not. If the international
registration was renewed the new expiry date will be displayed, and if it was
not renewed the status will change to Lapsed/Not Protected.
Q. What is replacement?
If you have a national registration and a protected international
trade mark for the same mark and the goods and/or services included in the national
registration are covered by the protected international trade mark, you can
request that the national registration be replaced. If you replacement request
is valid, you will get the earlier priority date for the goods and/or services
covered by the national registration.
Q. Is it possible to replace my basic trade mark with the international
registration?
No. The basic trade mark and your international registration
always remain as separate entities.
Q. Does replacement impact on the renewal date of my international
registration?
No. The international registration renewal date will remain unchanged.
Q. What is the advantage of replacement?
The biggest advantage of replacement is that it will streamline
your renewal and maintenance activities.
Q. Can I request replacement within the 5 year dependency period?
Yes, however you need to be careful as there could still be an
impact on your protected international trade mark if there is an action taken
against your basic trade mark.
Q. How can I search international registrations?
The Madrid Express database contains details of all international
registrations and is available via the WIPO web site. In addition, you can purchase
WIPO's ROMARIN (Read Only Memory of Madrid Active Registry Information) CD Rom.
This contains searchable information about international trade marks registered
under both the Madrid Protocol and the Madrid Agreement. ROMARIN is also available
through subscription in an on-line version. Further details are available on
WIPO's Internet site.
Q. Will international applications filed through IP Australia
appear on the Mainframe and ATMOSS?
No. International applications filed through IP Australia will
not have an impact in Australia, so are therefore not captured onto the database.
Q. How can I search for IRDAs, and what information will I
get?
Once Australia has been notified that they have been designated
in an international registration, the information will be captured onto our
existing database (Mainframe and ATMOSS) and will be searchable in exactly the
same way as national trade marks.
The record for an IRDA will contain the same information as you
currently see for national trade marks, with the addition of the international
registration number and expiry date, and the date Australia was notified of
the designation.
Q. Will there be any difference between the information on
the Mainframe and ATMOSS?
No. Both databases contain the same information.
Q. How do I find out what other countries have been designated?
You will need to search the International Register to access
information about other designations and the progress of protection in those
countries. This can be done using the Madrid Express database or the ROMARIN
database. Both databases are accessible through the WIPO web site. Alternatively,
you may be able to search the national databases of the designated countries
to check progress.
Q. What status will an IRDA have while it is under examination,
in opposition, and then protected?
As far as possible, status titles have remained in line with
those that apply to national trade marks. For example, and IRDA will be 'under
examination' or 'opposed', but the status title 'registered' has been changed
to 'registered/protected' to describe both national registrations and protected
international trade marks. 'Removal for non use proceedings' has been changed
to 'removal/cessation of protection for non use proceedings'.
Q. Can I have a series of trade marks
for my international application?
No. The Protocol does not allow for series marks.
Q. What if my basic trade mark is for a series?
If your basic trade mark is a series application/registration
you are advised to select one of the marks from the series as the trade mark
on your international application.
Q. Can I add more countries to my
international registration in the future?
Yes. You may wish to add other countries to your international
registration if your markets expand or other countries of interest join the
Protocol. There is no time restriction on subsequent designation requests.
Q. How do I subsequently designate another country?
You can apply directly to the IB, or through IP Australia (if
it was your original office of origin). You need to use the IB form for subsequent
designation and pay the appropriate fee for the country you are adding.
Q. What is the filing date for a subsequent designation?
The filing date will be the date that you make the request to
add a country. This means that once protection is extended by that country it
will only have effect from the date of request, not from the original filing
date of the international registration.
Q. What is the renewal date for subsequent designations?
The renewal date of the international registration will remain
unchanged. This means that when you subsequently designate a country you will
only get the balance of the 10 years before renewal is due.
Q. What are the fees for subsequent designation?
This depends on the country you are subsequently designating.
The same complementary, supplementary and/or individual fees will apply, however
the basic fee is reduced. Use either the WIPO fee calculator (for Swiss francs)
or IP Australia's fee calculator (for Australian dollars) to work out the fee.
Q. How long do designated countries
have to take a refusal against my international registration?
This depends on what countries you have designated, and whether
they have chosen 12 or 18 months. The 12 or 18 months timeframe will start from
when the office is notified that they have been designated.
Q. What if there is no refusal taken within the time frame?
If the IB is not notified of the refusals within the timeframe,
protection is automatically extended for that country. There is a possibility
that a provisional refusal based on opposition may be filed outside 18 months
(if a country has chosen 18 months) however the IB and holder must be notified
if this possibility exists.
Q. What is transformation?
If your international registration is restricted or cancelled
because of changes to the basic trade mark from actions within the 5 year dependency
period, you have three months in which to apply directly to your designated
countries for transformation. This means that you have an option for keeping
trade mark protection in those countries by 'converting' to a national application/registration.
Each country handles transformation in a different way, and may charge a fee,
however under the Protocol, if your request for transformation is valid, you
must be given the priority date that the international registration had.
Q. Can transformation be used under any other circumstances
- for example if I want to change the ownership and the new owner is not eligible
under the Protocol, or if I voluntarily cease my international registration?
No. Transformation is only an option if your international registration
is restricted or cancelled because of an action against your basic trade mark
within the 5 year dependency period.
Q. Can I transform the whole international registration even
if only part of it was cancelled?
No. You can only use transformation for the goods and/or services
that were cancelled from the international registration.
Q. How will Australia handle transformation of IRDAs?
IP Australia will not charge a fee for transformation, and if
the request is valid the international registration will be taken across at
the same status and with the same priority date as the international registration
was. For example; if it was an IRDA under examination it will be a national
application under examination with the balance of the 15 month period, if it
was an opposed IRDA, it will become an opposed national application with the
opposition process continuing, and if it was a protected international trade
mark it will be a national registration with the balance of the 10 year period
before renewal is due.
Q. Can I choose between French and
English?
You can nominate either French, Spanish or English for correspondence
between yourself and the IB, however any communications between the IB and IP
Australia, and directly between yourself and IP Australia will be in English.
Q. Who is responsible for translating documents from French
to English and vice versa?
When you file your initial application in English through IP Australia
the IB is responsible for any necessary translations into French and Spanish.
This is also true for any subsequent information forwarded through IP Australia
to the IB. Any correspondence directly between you and the offices of designated
countries must be translated at the holder's expense. This may include a notification
of provisional refusal.
Q. Do I have to provide a translation when I file an international
application?
When you file an international application through IP Australia
you may file all documents in English. Section 9 of the international registration
application form requires a transliteration of non Roman characters. It is not
mandatory to provide a translation at this time, however some designated countries
may request it.
Q. Will the French/Spanish/English translation be shown on
the International Register?
Yes. The international register can be viewed in English, Spanish
and French.
Q. Can I file an international application
for special types of marks?
You can file an application for shape, sound and colour marks,
however the Protocol has no provision for scent marks. Any written description
you provide on the international application form for special types of marks
must be the same as on the basic trade mark If you file a special type of mark,
you need to ensure that it will be recognised and therefore acceptable for the
countries you wish to designate. If they do not recognise that type of mark
under their national legislation, it cannot be extended protection in that country.
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