I Run a Textile Business. How Can I Protect My Intellectual Property Internationally?
As a textile industry business owner, you are probably considering trade mark registration to protect your intellectual property internationally. This will help you protect your brand in the competitive fashion industry. There are two options for Australian trade mark owners to obtain international trade mark protection.
- making an international application via IP Australia, identifying the applicable Madrid Protocol nations which require protection; and
- lodging an international application directly with each country. The Madrid Protocol is international law that allows and governs how trade marks may be registered internationally. The World Intellectual Property Organization (WIPO) in Geneva is in charge of its administration.
This international agreement makes it simpler for persons to apply for trade marks in many nations simultaneously. This article will explore some of the key considerations to think about before you decide to protect your textile business internationally through a trade mark.
What Will I Need?
To apply for an international trade mark, you must meet the following requirements:
- you must have an application or registration in Australia;
- you must fulfil eligibility criteria within Australia;
- the mark on the overseas application must be the same as on the Australian application;
- the claims in your Australian application must cover the products and services in your overseas application; and
- the applicant on the overseas application and the Australian application must be the same person.
Perform a Trade Mark Search
Before submitting an application, look for comparable trade marks. It is a good idea to look for any national trade marks comparable to your trade mark in Madrid Protocol nations of interest before filing for international registration. For example, you could try to look for other trade marks in the textile industry or the fashion industry at large. You may be able to avoid issues that make it difficult to register your trade mark if you do so.
You will neeYou will need to look for trade mark records in the nations of interest, as well as WIPO records. Most of the OECD and top fifty economies, including Europe and Japan, have signed the Madrid Protocol. Some other countries which are part of the Madrid Protocol are the United States, the United Kingdom and many countries in the European Union. These are all top economies which you will likely do business with as part of the production chain or supply chain for an international business in the textile sector. Consider engaging a high level specialist in international trade mark searches, as conducting a thorough search is not an easy task.
Work Out How Much You Will Pay
Each overseas application filed via IP Australia is subject to a handling charge of $100. The handling charge covers the costs of verifying, certifying, and sending the overseas application to WIPO. When filing an overseas application, you must pay the handling charge at the time of filing. However, if you lodge the application using eServices, you will pay the total international application fee and IP Australia application handling fees in Swiss Francs in a single transaction directly to WIPO. The foreign application fees are in addition to the handling charge and can vary greatly.
Remember That Series Trade Marks Cannot Be Filed Internationally
Even if the fundamental trade mark covers a series of marks, filing an international application for a series of trade marks is impossible. It is recommended that the foreign applicant use one of the series trade marks as the trade mark on their international application.
Remember the Priority Ranking System
Suppose you have already registered an identical trade mark in another country. In that case, the Paris Convention enables you to claim a first in time priority date on your second filed international application if you file it within six months of the initial filing date of the country of origin.
This can be quite useful during the registration process.
For example, you will know the possibility of registering your basic Australian trade mark internationally if you wait to obtain an examination report on your national application first.
This will help you understand what you are doing wrong.
Do Not Change the Base Trade Mark
Because the international registration is dependent on the fundamental trade mark for five years from the date the international application is submitted, you must properly maintain it.
IP Australia will notify the WIPO if you modify the scope of the fundamental trade mask as it has the same impact on international registration.
For example, if the fundamental trade mark:
- is cancelled or withdrawn; or
- the products or services are changed within five years of filing the international application,
the WIPO will revoke the international registration in all specified countries to the same extent.
Before deciding to protect your textile business internationally, you should consider:
- searching both local and international databases for trade marks similar to your own desired trade mark;
- ensuring you know what fees you need to pay;
- making sure to select only one trade mark if you have a series registration of trade marks;
- keeping in mind the priority ranking system; and
- putting a solid and practical plan in place to ensure the base trade mark does not change for five years.
It is a good idea to protect your business so you can fully engage in world trade, particularly if you are dealing with textile imports and not just your local industry.
Frequently Asked Questions
You need to file an application in Australia (or the country you are from or your business is based) before you take steps to file your trade mark internationally.
The applicant on the overseas application and the Australian application/registration must be the same person.