Overseas trade mark protection
Australian brand owners typically seek to register overseas trade marks one of two ways. Firstly, individual trade mark applications can be filed directly in each overseas territory where protection is required. Alternatively, a single application for an international trade mark registration under the Madrid Protocol can be filed.
This post considers some advantages and disadvantages of each approach.
Individual applications
Advantages
If the list of territories is small and only a few or no issues are encountered during the prosecution process, this approach can prove to be the cheapest and simplest.
Disadvantages
If protection in a large number of territories is required, filing individual applications can quickly become expensive and complex. An overseas trade mark agent will need to be appointed to file each application in each territory.
Application, translation/transliteration and registration costs may also need to 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.
Some countries require trade mark applicants to prove that they are actually using their trade mark in the relevant country in order to keep a trade mark registration in force. These requirements can be more stringent for trade mark registrations that are obtained via a direct filing approach compared to the Madrid Protocol. For example, in the USA an applicant must file a declaration of use within 6 months of receiving a notice of allowance issued by the US Trade Marks Office for an application filed directly in the USA. The notice must include evidence of the trade mark being used in the USA. Under the Madrid Protocol approach, the declaration of use does not need to be filed under 5 years after the registration has been obtained in the USA.
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 recorded. The international registration is subsequently "prosecuted" by the relevant national trade marks office in each national designation. The registration must successfully pass through examination and opposition phase in each territory under the prosecution process 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 cost effective. Firstly, only one set of application fees needs to be paid. The applicant is also notified, centrally, about any examination objections or oppositions received in each designated territory. If the registration is refused in an individual territory, then this will not 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 territories, these can be added to the international registration.
An international registration can also be converted into a national application in any individual designated territory 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.
Some countries, such as the USA and Canada, require a local attorney to be appointed if the applicant wants the relevant national trade marks office to send prosecution correspondence relating to the national designation to the applicant's attorney in Australia. If a local attorney is not appointed, then the trade marks office will typically send such prosecution correspondence directly to the applicant rather than their Australian attorney. If local prosecution issues arise (e.g., a national trade marks office issues an objection during the examination stage) then a local trade marks attorney will likely need to be appointed to tackle the issues.
An international registration is also dependent on the Australian trade mark filing that it is based on for five years. If the Australian filing lapses, ceases or is revoked during this period, then the international registration ends in all designated territories. A third party competitor can, therefore, seek revocation of an international registration by conveniently attacking just the Australian registration.
This post considers some advantages and disadvantages of each approach.
Individual applications
Advantages
If the list of territories is small and only a few or no issues are encountered during the prosecution process, this approach can prove to be the cheapest and simplest.
Disadvantages
If protection in a large number of territories is required, filing individual applications can quickly become expensive and complex. An overseas trade mark agent will need to be appointed to file each application in each territory.
Application, translation/transliteration and registration costs may also need to 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.
Some countries require trade mark applicants to prove that they are actually using their trade mark in the relevant country in order to keep a trade mark registration in force. These requirements can be more stringent for trade mark registrations that are obtained via a direct filing approach compared to the Madrid Protocol. For example, in the USA an applicant must file a declaration of use within 6 months of receiving a notice of allowance issued by the US Trade Marks Office for an application filed directly in the USA. The notice must include evidence of the trade mark being used in the USA. Under the Madrid Protocol approach, the declaration of use does not need to be filed under 5 years after the registration has been obtained in the USA.
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 recorded. The international registration is subsequently "prosecuted" by the relevant national trade marks office in each national designation. The registration must successfully pass through examination and opposition phase in each territory under the prosecution process 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 cost effective. Firstly, only one set of application fees needs to be paid. The applicant is also notified, centrally, about any examination objections or oppositions received in each designated territory. If the registration is refused in an individual territory, then this will not 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 territories, these can be added to the international registration.
An international registration can also be converted into a national application in any individual designated territory 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.
Some countries, such as the USA and Canada, require a local attorney to be appointed if the applicant wants the relevant national trade marks office to send prosecution correspondence relating to the national designation to the applicant's attorney in Australia. If a local attorney is not appointed, then the trade marks office will typically send such prosecution correspondence directly to the applicant rather than their Australian attorney. If local prosecution issues arise (e.g., a national trade marks office issues an objection during the examination stage) then a local trade marks attorney will likely need to be appointed to tackle the issues.
An international registration is also dependent on the Australian trade mark filing that it is based on for five years. If the Australian filing lapses, ceases or is revoked during this period, then the international registration ends in all designated territories. A third party competitor can, therefore, seek revocation of an international registration by conveniently attacking just the Australian registration.
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