There are some important things to know before applying for an international trade mark using the Madrid System.
The Madrid System is administered by the World Intellectual Property Organization (WIPO). Your application needs to be based on an existing Australian trade mark application or registration. The international trade mark and the owner must be the same as your Australian trade mark. You cannot change or tweak your trade mark for the overseas market. You also cannot add any new items to your description of goods and services in the international application. You can only list items that were included in your existing Australian trade mark.
If you have multiple trade marks, you can list them in the same international application as long as the trade marks and applicant are the same.
Are you entitled to file an international application?
You are entitled to file an international trade mark from Australia if you are:
- an Australian national
- an Australian resident
- someone who owns a real industrial or commercial establishment in Australia
- a person or organisation with business premises in Australia.
How much does it cost?
The cost depends on how many countries you want your trade mark to be protected in, which countries they are, and how many classes cover your goods and services.
You can use the WIPO Fee Calculator to calculate the fees of your international application.
See International trade mark costs for more information.
All fees must be paid directly to WIPO in Swiss francs at the time of filing the international application on the WIPO Madrid e-filing platform.
Considering your goods and services
Your description of goods and services define the scope of your trade mark. When you apply through the Madrid System, the goods and services in your international application must either be the same, or narrower in scope, as those claimed in your Australian application or registration. This means that while you can remove descriptions of goods and services from your international application, you will not be able to add any goods or services if they were not originally included in the existing Australian application or registration.
WIPO’s Madrid Goods & Services Manager (MGS) is a classification tool that can help you avoid mistakes when describing your goods and services. We recommend checking your claims with MGS before you apply for your Australian trade mark, especially if you know it will form the basis of an international application.
Your international application may proceed more smoothly if you use MGS to check that you have listed your goods and services in the correct classes and that your descriptions are clear enough to be acceptable under WIPO rules as well as the rules of the countries in which you seek protection.
Some of the benefits of using this tool are:
- potential time and cost-savings when your application is assessed by WIPO
- reduced risk of classification issues
- advanced search functions that allow you to check acceptance of terms by participating IP offices
- viewing up-to-date classification as MGS is aligned with WIPO’s acceptable terms.
The goods and services claimed in your international application should be for the goods and services you actually intend to use with your trade mark in the countries that you have designated in your application.
If the goods and services in your application don’t satisfy WIPO’s formality checks, they will send you an irregularity notice. Receiving an irregularity notice may result in a longer application process or additional costs.
Please note: WIPO may accept certain words in your descriptions of goods and services that other designated countries will not accept. The MGS can provide useful assistance about which countries will accept your descriptions.
Searching for similar trade marks before applying
It can be difficult to register your trade mark in another country if a confusingly similar trade mark for similar goods or services already exists there. You may wish to conduct a search for similar trade marks in other countries before applying.
You can perform searches for existing brand data from over 50 national and international collections including trade marks, appellations of origin, and official emblems on the WIPO Global Brand Database. You can see which countries and international bodies have included trade mark data in the Global Brand Database under the Database Contents.
You can also use the WIPO search facility ‘Madrid Monitor to search WIPO records for free. Madrid Monitor contains information about international applications that have been received from an office of origin and international registrations that have occurred under the Madrid System.
Our role in the application process
We will perform a check to ensure formal requirements under the Madrid System are met. For example, we will check that the trade mark and the applicant included in your international application are the same as your Australian trade mark (called ‘the basic mark’) and that the goods and services listed in your international application are covered by the goods and services listed in the basic mark. If these requirements are not met, we will send you an ‘unable to certify’ letter to fix the issues with the application. When the requirements have been met, we will certify the international application, issue a notification of certification and send the application to WIPO.
Our check does not guarantee that your descriptions of goods and services will pass WIPO formality checks.
World Intellectual Property Organization's role
After WIPO receives the application, they will examine it.
If there are any irregularities in your application, WIPO will issue an irregularity notice. You will need to address the irregularities within the specified times to continue. When the application has been deemed suitable, WIPO 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.
WIPO will then issue a certificate of registration and advise the designated countries of the international trade mark registration. This certificate of registration is a statement that the details have been recorded on the international register. It does not mean your trade mark is protected in all the countries that you have designated.
WIPO's acceptance of certain words in your descriptions of goods and services does not guarantee that all countries will accept them.
Designated countries' role
Designated countries are the individual countries selected on your application.
Each designated country will check the international registration under their laws. They will notify WIPO about whether protection can be extended in that country or if there is a problem resulting in a provisional refusal.
WIPO will notify you if a provisional refusal is raised, but you must reply directly to the relevant country about their refusal. You may need to meet other requirements of their particular trade mark laws, for example, providing a contact address within that country. We are unable to provide guidance about a provisional refusal raised by another country’s IP office.
Once any objections have been overcome, the designated country may advertise your international registration for opposition. If opposition is filed, the designated country will notify WIPO who will then advise you. The notification should contain information about the relevant procedures if you decide to contest the opposition. The designated country will then notify WIPO of full or partial protection or full refusal within that country.
If the designated country does not object to your application within the set time limits, your mark will be protected in that country. For further information regarding the application process please refer to WIPO.