So, you’ve got yourself a legally legit biz here in Australia – complete with contracts, policies, and even a trademark or two. Go you! But you’re thinking big. What’s next? World domination, perhaps?
If you’re looking to go global, and branch out beyond our borders, you’ll need to consider international trademark registration in the countries you’re looking to make biz waves in. Here’s how.
What you need to know about international trademark law
In general, trademarks need to be registered in the country they’re being used in, in order to be recognised under the law. That also means they’re governed by the laws of that particular country, which can vary from place to place. But luckily, you don’t necessarily need to submit several applications for trademark registration in every place you’ll ever expand your biz into – there are protocols for that. The Madrid Protocol, to be exact.
What is the Madrid Protocol?
Are trademarks international? Well, thanks to the Madrid Protocol, they can be. The Madrid Protocol is a system that allows you to complete a single trademark application, which is then filed in a number of countries. It exists to simplify the trademark registration process, making it easier to register in multiple places all in one go.
Each trademark request made to a Madrid member country is looked at according to that particular country’s legislation. You can head on over to WIPO (The World Intellectual Property Organization) to see which countries participate in the system.
What are the benefits of the Madrid Protocol?
The benefits of using this clever little system are:
- Payment is made in one currency
- If you need to change or renew your trademark, you only need to make a single request and it’ll apply for all the countries where it’s registered
- You can apply for protection of your Aussie trademark in multiple member countries in one simple request
- It’s cheaper (and easier) than having to apply for registration in each individual country
It’s a win-win in my book.
How does international trademark registration work?
Before submitting your international trademark registration application, our friends at IP Australia say you need to consider the following:
- You must have a pending application and/or a registered trademark in Australia to form the basis of your application
- You must meet entitlement requirements within Australia
- The mark on the international application must be identical to that contained on the Australian application/registration
- The goods and services in your international application must be covered by the claims in the Australian register’s listing
- The applicant on the international application must also be the applicant on the IP Australia register
How do I register a trademark internationally?
If you’re an Australian biz looking into how to register a trademark internationally, and you meet the above requirements, you can utilise the Madrid e-filing platform found on the IP Australia online services platform (you can register for an IP Australia account here) to get going.
How to register your trademark under international trademark law
- Apply for a trademark through IP Australia
- Once it’s approved (or even while it’s pending), file your application under the Madrid Protocol – either:
- by yourself; or
- with Foundd Legal by your side (because you’ve got enough on your plate, busy biz boss!)
It's time to go global!
As you begin your journey into international trade mark registration, just remember, it goes both ways. There could be a business similar to yours overseas that has gained a trade mark here in Australia! So check out the databases of the other countries you’re interested in to make sure there aren’t any crossovers.
While this is a great way to potentially simplify your application process, it’s still smart to get advice from an IP lawyer. Especially if you want to make sure you're following the steps the legally legit way.
So grab your party shoes, a glass of champers and let’s talk all things trademarks.
Riz Amin is Foundd Legal’s founder and a lawyer of over 20 years. When she’s not nose-deep in contracts (or a good glass of red), she’s chasing after her two kiddos or two fluffballs.
** Disclaimer: This article is for general information purposes only, and does not constitute legal or other professional advice. **