International Trade Mark Registration

International Trade Mark Registration

There is no such thing as a ‘global’ trade mark and so you need to register your trade mark in each country where the protection is sought.

 

Even if you do not reach out a global market immediately, it is recommended that your trade mark is registered in those countries that would be affected by the potential expansion of your business in the near future. This is because a majority of countries have a first-to-file system and if you leave it too late, a third party might have already registered the same or confusingly similar mark to yours, which leaves you no choice but to use an alternative brand.

 

There are two ways of applying for international trade mark registrations, namely,

 

  1. filing a separate application in each country where you decide to pursue registration, or
  2. filing a single application covering a number of countries under the international convention called “Madrid Protocol”. Most Australian counter parts are members of the Madrid Protocol including the USA, the EU, New Zealand, China, Japan and South Korea.

 

Filing a Madrid Protocol application is much faster and simpler, and it will be more cost effective where you protection is sought in 3 or more countries (or regions). On the contrary, if you intend to register a trade mark in only 1 or 2 countries (regions), an individual country application might be the cheaper option. The downside of the Madrid Protocol application is that your international registration would be cancelled or limited to the same extent that your Australian registration was cancelled or limited. Further, not all countries are members of the Madrid Protocol including Canada, Hong Kong, Taiwan and South Africa, where an individual country application is required to be filed.

 

The requirements and costs are vary on each countries. Let us know the country you are interested in, we will then advise you of the total costs including our overseas associates and the government fees. We have extensive global network with reputable law firms and this will ensure you get the best possible outcomes at the best price.

 

For more information, call us today on 02 9233 1411 or send us an online enquiry.

Common Questions

What is Trade Marks?

A trade mark is a sign which can distinguish the goods and services of one trader from those of another. A trade mark can be a word, letter, number, symbol, shape, logo, design, scent or phrase. Trade marks help consumers to recognise the origin or source of the goods or services being offered. A trade mark can also become a signifier of the quality of the goods and services on offer.

If I am exporting do I have to register my trade mark in other countries as well?

Each country has its own laws and practices regarding trade marks. So you will need to apply for protection in each country where you wish to register your trade mark, otherwise your mark is vulnerable in the export market. If you export in multiple countries, you can use a Madrid Protocol Application which provides a streamlined and cost-effective filing means.