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Overseas trade mark protection

Australian brand owners typically seek overseas trade mark protection one of two ways. Firstly, individual applications may be filed in each overseas country where protection is required. Alternatively, a single international application may be filed under the Madrid Protocol.

This post considers some advantages and disadvantages of each approach.

Individual applications

Advantages

If the list of countries is small and only a few or no issues are encountered during prosecution, this approach can prove to be the cheapest and simplest.

Individually filed overseas applications may be able to claim the priority date of a related Australian application if the relevant countries are signatory to the Paris Convention and the overseas applications are made within six months of the Australian application’s filing date.

Disadvantages

If protection in a large number of countries is required, filing individual applications can quickly become expensive and complex. If prosecution issues arise, trade mark agents appointed in each relevant territory will need to tackle them.

Application, translation/transliteration and registration costs may also be incurred on a per country basis. If any administrative details of the applications (or subsequent registrations) need to be updated, these must also be executed per country.

Madrid Protocol

An international application can be filed in Australia under the Madrid Protocol provided that a related registration or application for the relevant trade mark exists in Australia. The process is commenced by filing a single application, in English, designating the countries where protection is initially required.

After a formalities check has been completed, the international registration is then recorded. Each designated country then proceeds to examine the international registration. The registration must pass examination and opposition in each territory, under the country’s trade mark laws and procedure, before enforceable rights are obtained in the territory.

Advantages

If protection in many territories is needed (typically three or more), pursuing a Madrid Protocol application is often the most streamlined and cheapest. Firstly, only one set of fees needs to be paid. The applicant is also notified, centrally, about any examiner objections or oppositions received in each designated territory. If the registration is refused in an individual territory, this doesn’t affect its status in other designated territories.

Changes to administrative details of the international registration, such as the owner’s name, address, renewals and recordal of assignments, can also be conducted centrally in Australia. If protection is subsequently required in additional countries, these can be added to the international registration.

An international registration can also be converted into a national application in any individual designated country if it becomes necessary to do so for legal or commercial reasons.

Disadvantages

Not all countries are signatory to the Madrid Protocol. It is worth noting, however, that the list of signatories is considerable and includes, notably, China, USA and (collectively) the EU.

All registration fees are non-refundable and must be paid up front. If the registration receives objections or oppositions in a designated country, a local agent will likely need to be appointed to tackle the issues under the country’s laws.

An international registration is also dependent on the Australian registration that it is based on for five years after filing. If the Australian registration lapses, ceases or is revoked or amended during this period, then the international registration ends in all designated countries. A third party competitor can, therefore, seek revocation of an international registration by conveniently attacking just the Australian registration.

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