An Australian trade mark provides protection only within Australia. There are two ways Australian trade mark owners can seek trade mark protection overseas:
- Via an application filed directly to each country
- Via a single international application filed through the World Intellectual Property Organization (WIPO) nominating the Madrid member countries in which protection is sought
If you apply directly to another country you need to do that through their systems, and not through IP Australia. You will need to apply to each country separately. We recommend that you seek advice from an intellectual property (IP) professional before you file overseas.
Whichever option you choose, you will still end up with separate trade mark applications in each country.
The Madrid System
The Madrid System facilitates the filing of trade mark applications in a number of countries through one application. It is administered by WIPO in Geneva.
All requests for protection in Madrid member countries are examined according to the trade mark legislation and laws existing in the designated countries. You may want to get the advice of an IP attorney professionals who is familiar with the details of each country.
WIPO provides a full list of member countries that an international application can cover.
Conversely, the Madrid System also allows foreign trade mark owners to designate Australia in their international applications. This means that overseas traders could have trade marks similar to yours that are operational in Australia. You should be checking databases to make sure there are no crossovers.
Requirements for international applications
Requirements to apply for an international trade mark are:
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 do I apply through the Madrid System
An international trade mark application filed through the Madrid System must be filed through the Office of Origin (where the basic trade mark was filed).
IP Australia will only accept an international trade mark application filed though the Madrid e-Filing platform found in our online services platform.
IP Australia will no longer accept the physical MM2 application form as of the 01 July 2016. The exception is when there is maintenance being performed on our online services or the Madrid e-Filing platform.
For more information please see: Madrid e-Filing User Guide
How long does an international registration last?
Your international registration is protected for a period of 10 years from the date of registration. Registration can be renewed every 10 years upon payment of the relevant fees.
Benefits of the Madrid System
Benefits of the Madrid System include:
you can apply for protection of your Australian trade mark registration in its member countries, all in one request
the request is filed in one language (English) and payment is made to WIPO in one currency (Swiss francs)
the process can be simpler and cheaper than directly applying to each country, depending on how widely you want to trade
you do not need to have an address for service within the contracting countries at the 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
International trade mark costs
You can work out the cost of applying for an international trade mark by using the WIPO fee calculator to determine the amount due in Swiss francs. Please note the exact figure in Australian dollars will depend on the conversion rate used on the day your application is submitted.
For more information on fees and the Madrid system please refer to:
Trade mark protection in the United States
If you’re thinking about expanding your business and entering the US market, it’s important to understand how to protect your brand while you’re there.
The US is a huge opportunity for businesses and having the legal right to protect your brand can be your most valuable marketing tool. One aspect of protecting a brand is through trade mark registration. Your trade mark is the way you show your customers who you are. The more successful your business, the more valuable your trade mark becomes.