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 Protocol 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 Protocol
The Madrid Protocol is a treaty that provides international registration of a trade mark. It is administered by the International Bureau of WIPO in Geneva. It facilitates filing of trade mark applications in a number of countries in one application.
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 Protocol also allows trade mark owners overseas 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 Protocol
An International Trade mark application filed through the Madrid Protocol 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 eFile System found in Online Services (eServices).
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 with Online Services or the Madrid eFile System.
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 Protocol
The Madrid Protocol allows you to extend the protection of your Australian trade mark registration into its member countries, all in one request. This 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.
Another benefit of international registration is the ability to make subsequent designations in other Madrid member countries at a later date.
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.