How can local brand owners register trade marks internationally?

First and foremost, trademark rights are territorial. So, trade marks should be registered in all territories where the mark is or will be used.

Trade marks can be protected overseas in 2 ways:

  1. as an international application via the Madrid Protocol designating at least one country; or
  2. directly as national applications in a country or region (such as the European Union).

What is an international application via the Madrid Protocol?

An international application (IR) via the Madrid Protocol is a single application which can cover one or all of the 106 member countries (current at April 2020). For most member countries, one set of fees is paid which includes both the filing fees and registration fees.

An IR requires a basic application or registration in the home country for the same mark and for some or all of the goods/services covered by the basic mark before it can be filed.

What are the benefits of an international application via the Madrid Protocol?

The benefits of an IR include:

  • Cost savings upfront at filing
  • Many of the world’s core markets are now covered by the Madrid Protocol including China, the EU and the US
  • Countries can be added to the IR if the business expands to other countries
  • Once protected in a country, the protection afforded is the same as a national registration
  • Time frames for examination are certain – the Trademarks Offices of each country must examine applications in 12 or 18 months
  • Single renewal and recording of changes to the IR, such as a change of name

The disadvantages of an IR include:

  • Practices of the Offices of designated countries is different (e.g. some countries will not permit amendment of goods/services or will not accept certain descriptions)
  • Some countries have second part fees (Japan)
  • Some countries will almost always issue an adverse report and any cost saving at filing is lost by having to appoint a local attorney to respond
  • IR is dependent on basic application/registration for 5 years from filing the IR. If the basic application/registration fails during that period so too will the IR
  • There are only a handful of amendments that can be made to an IR

Can I file an IR via the Madrid Protocol?

Provided you:

  1. are an individual or other legal entity that is a national of the home country, is domiciled in the home country or have a real and effective commercial or industrial establishment in the home country; and
  2. have an existing application or registration for the same mark (known as the basic application or registration) in the home country;

you will qualify to apply for an IR via the Madrid Protocol.

How can I file an IR via the Madrid Protocol?

The IR can be filed directly with the World Intellectual Property Office (WIPO) or we can advise on, prepare and file the IR on your behalf.

What if I want to file applications for my trade mark in non-Madrid Protocol countries?

These applications must be filed directly as national applications in each country usually through local lawyers.

The TradeMark Factory has trusted associated around the globe to assist with international brand protection.

Where to file – First to Use vs. First to File countries

Of course, it may not be possible to file your trade mark in every country but as a starting point you should be thinking about trade mark registration in countries where you will be using the mark on your goods/services including where the goods will be manufactured, distribute and/or where you are intending to license the use of the mark to a third party.

There are a number of countries which are referred to as “first to file” countries. In these countries, trade mark rights are acquired only on registration of a trade mark. We recommend that you priorities first to file countries as part of your trade mark strategy to avoid “trade mark squatting”.

These countries include:

Algeria Dominican Republic Kuwait Slovenia
Anguilla Ecuador Kyrgyzstan South Korea
Argentina El Salvador Lithuania Spain
Austria Estonia Mexico Syria
Belarus European Union Moldova Taiwan
Belize Finland Montenegro Thailand
Benelux France Nicaragua Uganda
Bolivia Germany Nigeria Ukraine
Botswana Greece Norway United Kingdom
Brazil Guatemala Peru Venezuela
Chile Hungary Philippines Vietnam
China Iran Poland  Zambia
Colombia Japan Qatar
Croatia Jordan Romania
Curacao Kazakhstan Russian Federation
Czech Republic Kosovo Serbia

“First to use” countries on the other hand provide trade mark rights to the first person to use the mark and therefore these countries allow a trade mark owner to take action against unauthorised use of an unregistered mark.

First to use countries include:

Aruba Italy Saudi Arabia
Australia Jamaica Singapore
Brunei Darussalam Kenya South Africa
Canada Latvia Swaziland
Costa Rica Lebanon Turkey
Cyprus Malawi United Arab Emirates
Denmark Malta United States
Fiji New Zealand Uruguay
Hong Kong Pakistan Yemen
Iceland Panama Zimbabwe
India Papua New Guinea
Ireland Puerto Rico
Israel Samoa

What next?

If you are thinking about expanding your product or service offering to overseas markets, it is essential that you think about trade mark registration in the required countries as soon as possible.

The TradeMark Factory has extensive experience with brand protection in Australia and throughout the world and can assist you with any questions you may have about the protection of your brand. Please contact us for further information.