I Have a Foreign Business. Do I Need an Australian Trade Mark?
Do you have a foreign business looking to expand into the Australian market? If you would like to operate in Australia whilst also protecting your intellectual property, then you will need to apply for a valid Australian trade mark. You can either do this by:
- applying for a trade mark in Australia; or
- filing an application through the Madrid Protocol.
Either way, you will need to file separate trade mark applications for each country you plan to operate in. This article will explore:
- some key considerations if you are a foreign business considering whether you need an Australian trade mark; and
- how to register an Australian trade mark.
The Madrid Protocol
The Madrid Protocol is the international mechanism for cross border recognition of intellectual property rights in Madrid member states. Not all countries are a party to the protocol. Therefore, you need to check whether your country of origin (the place you initially filed your trade mark application) is a participating country. Australia is a participating country and has signed up to the protocol.
You will need to file for international recognition in your country. Then, IP Australia will check whether this is able to be recognised. International recognition lasts 10 years from the date you register the trade mark.
It is important to note that the Madrid Protocol is an agreement between different countries. The respective countries’ laws apply when determining the final trade mark decision.
Using The Madrid Protocol
In order to lodge an application under the Madrid Protocol, there are a number of matters that you must meet. In order to lodge:
- you will need an application or a registration in your country of origin to base your application on;
- the application under the Madrid Protocol must be identical to the one you lodged in your country of origin;
- you will need to meet the specific requirements for international lodgement of your country of origin;
- the services or goods listed in your application need to be covered by a good or service class in Australia; and
- the applying party must be the same as the applicant in the country of origin.
Applying Directly For A Trade Mark in Australia
You can apply directly to IP Australia if you:
- do not wish to apply for an international trade mark; or
- only want to have your trade mark recognised in Australia and your country of origin.
You will need to meet the Australian requirements before IP Australia grants your trade mark registration. You will also need to show that you are, or are about to be, providing a good or service in Australia that uses the relevant trade mark.
For example, perhaps you have a successful restaurant chain that you would like to expand to Australia. If you can show that you are taking steps to expand into Australia, you can potentially make a trade mark application to IP Australia to protect your foreign business’ intellectual property.
Checking For Similar Trade Marks
In both scenarios, you will be subject to opposition by current trade marks in Australia that are similar to your desired trade mark. You should conduct a search for similar trade marks before you make a trade mark application in Australia.
Both the World Intellectual Property Organisation and IP Australia have dedicated online databases. You can use these to check whether a similar registered trade mark already exists.
Before deciding to register a trade mark in Australia, you should consider:
- whether your country of origin is a Madrid member state;
- what other countries you may like to register your trade mark in; and
- whether you want to lodge an international application through the World Intellectual Property Organisation or lodge an application directly through IP Australia.
Frequently Asked Questions
The Madrid Protocol is an international treaty setting out a process for international recognition of intellectual property rights.
You can lodge a trade mark application in Australia through IP Australia. This will only protect your trade mark in Australia.
This depends on whether you are only lodging in Australia or intend to have a wider number of countries that you want protection in.