Registering Trade Marks Overseas under the Madrid Protocol

Registering Trade Marks Overseas under the Madrid Protocol

So you’ve got yourself a rocking brand and business and you’ve stepped up to get legally legit. You’ve registered your business, sorted your agreements, put your policies in place and even looked into registering your trade mark here in Australia! But what about registering your trade mark overseas? If you’re looking to branch out beyond our borders, it’s time to dive a little deeper and get your trade mark registered in the other countries you’re hoping to make biz waves in. 

The Madrid Protocol and its multinational application process can help you with that. 

Insert record scratch here. Say what? 

The Madrid Protocol 

The Madrid Protocol basically allows you to fill out a single trade mark application that will then be filed in a number of countries. Each trade mark request made to a Madrid member country is looked at according to the particular country’s legislation. You can head on over to WIPO (The World Intellectual Property Organization) to see which countries participate in the system. 

Here’s what you need to know in terms of requirements to apply for an international trade mark, according to IP Australia: 

  • You must have a pending application and/or a registered trade mark in Australia on which to base 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 application 
  • The applicant on the international application must also be the applicant on the IP Australia register 

If you’re an Australian business looking to apply for a trade mark overseas, 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). 

The benefits of using this clever little system are: 

  • You can apply for protection of your Aussie trade mark in multiple member countries in one snazzy request 
  • It can be cheaper (and easier) than having to apply for registration in each individual country 
  • Payment is made in one currency (Swiss francs...fancy!)  
  • You only need to make a single request if you need to change or renew your trade mark for all the countries where it’s registered  

It’s kiiiiinda a win, in our books. 

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. So as always, if you need some direction or have any questions, we’re here for you. Hit us up for your free consultation! 

 

 

 

Riz McDonald is a lawyer of over 16 years and a passionate cheerleader for women in business. She’s also a mum of two and a lover of good wine. 

 

***Disclaimer***   

This article is for general information purposes only and does not constitute legal advice or other professional advice.   

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