How can I register an international trade mark?
An Australian trade mark registration only provides protection in Australia and not internationally. There is no such thing as a ‘worldwide trade mark’. A separate application process is required to obtain trade mark registration for your brand in other countries.
What is the process to obtain trade mark registration overseas?
There are three ways to apply for trade mark registration in countries relevant to your business’ commercial interests:
- The Madrid Protocol provides a simple and less expensive method of international trade mark registration by allowing you to apply in multiple countries using a single application. It also allows for renewals in multiple countries in a single step. There are presently 97 member states to the Madrid Protocol, including the USA and China. Used in the right way, you can benefit from a consolidation of administrative and legal costs.
- The European Union Trade Mark System is another means of seeking registration in multiple European countries initiated by a single application and single registration procedure. A ‘European Union trade mark’, once granted, gives you a legally enforceable right to your mark over each member country. This is a much quicker and cheaper procedure than filing a single application in each European country of interest.
- Trade mark applications can be filed directly in each country of interest. To do this, a local associate must be appointed to handle each application in each country. Unlike options 1 and 2, a separate administrative cost is applied for each country of registration. The Paris Convention operates in each option, which maintains the priority date of your first application as long as the international application is made within six months.
Trade Mark Portfolio Management
As important as seeking trade mark protection in Australia and other corresponding markets of interests, is ensuring that those multiple trade mark applications from filing through to grant are managed cost effectively and efficiently. Missing a deadline throughout the process in each country of interest can at worst mean losing your trade mark rights in that jurisdiction. Actuate IP utilises a trade mark specific database that manages the varying procedures and deadlines applicable in each country in conjunction with the advice we receive from our close network of overseas associates. We have extensive experience in developing international trade mark protection strategies and the important administrative management of that portfolio.
HOW CAN ACTUATE IP ASSIST?
Actuate IP’s qualified trade mark attorneys provide an expert and tailored approach to assisting with the implementation of trade mark strategies and trade mark protection for businesses. We work with a close network of overseas trade mark attorneys in all key jurisdictions meaning we can assist you with any international trade mark protection in an efficient way with a clear focus on achieving the right outcome.