When applying for an international trade mark, there are some important things to keep in mind.
Applications using the Madrid Protocol must be based on an existing Australian trade mark.
You cannot change or tweak your trade mark or registration for the overseas market.
That is, the trade marks must be identical on both applications. All goods and/or services claimed in the international application must be covered by the claims in the Australian trade mark. Additionally, the applicant of the Australian trade mark and the international application must be the same.
If you have multiple trade marks, they can be listed on the same international application as long as the trade mark and applicant are the same.
Are you entitled to file an international application?
In order to be entitled to file for an international trade mark each applicant must be either:
- an Australian national
- an Australian resident
- someone who owns a real industrial or commercial establishment in Australia
- a person or organisation with a business premises in Australia.
How much does it cost?
The cost 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
- complementary fees for countries that have not nominated an individual fee
- a fee for each country that has nominated to receive individual fees (these may differ from country to country)
- a supplementary fee if more than three classes are nominated
All fees must be paid directly to the International Bureau in Swiss francs at the time of filing the international application on the WIPO Madrid e-Filing.
Searching for similar trade marks before applying
Before applying you may wish to identify any national trade marks in Madrid Protocol member countries of interest that are similar to your trade mark, as this may make it difficult to register your trade mark.
WIPO provides the Global Brand Database facility where searches may be performed for existing brand data from multiple national and international sources including trade marks, appellations of origin and official emblems.
International Bureau records can be searched for free using the WIPO search facility Madrid Monitor, which contains information about international applications that have been received from an office of origin and all international registrations.
Our role in the application process
IP Australia will perform a check to ensure all requirements under the Madrid Protocol are met. An 'unable to certify' letter will be sent to you to remedy any formality issues in the application.
When the international application is in order it will then be certified, a notification of certification will be issued by us and the application will be sent to the International Bureau.
International Bureau role
After a notification of certification is issued by IP Australia, the International Bureau will then examine the international application.
If there are any irregularities in the application, the International Bureau will issue an irregularity notice. You will need to address the irregularities within the specified times in order to proceed. When the application has been deemed suitable, the International Bureau will issue an international registration number, record the details on their register and publish details of the international registration in the WIPO Gazette of International Marks.
The International Bureau will then issue a certificate of registration and advise the designated countries of the international trade mark registration. This certificate of registration does not mean the trade mark is protected in all the countries designated. It is a statement that the details have been recorded on the international register.
WIPO's acceptance of certain words in your list of goods and services does not guarantee that all countries will accept them.
Designated country roles
The designated countries (the individual countries selected on your application) will then check the international registration in accordance with national legislation and notify the International Bureau of either extension of protection within that country or raise objections (provisional refusal).
If a provisional refusal is raised, you will receive the notification from the International Bureau. You must however reply direct to the country about their refusal. You may need to meet other requirements of their particular trade mark laws, for example by providing a contact address within the country. We are unable to provide guidance in relation to a provisional refusal raised by another country’s IP office.
Once any objections are overcome, the designated country may advertise your international registration for opposition. If opposition is filed, the designated country must notify the International Bureau which will advise you. You will be informed about relevant procedures, should you decide to contest the opposition. The designated country will then notify the International Bureau either of full or partial protection or full refusal within that country.
If a country does not object to your application within the set time limits being either 12 or 18 months, your mark will be protected in that country. For further information regarding the application process please refer to WIPO.