4 Things to Know about International Trade Marks
Emily Young
More and more Australian businesses are expanding their products and services to overseas markets in this increasingly globalised world, either directly or online. Having an international trade mark is a great way to protect your brand during your overseas business practices. To help you better understand international trade marks, this article will take you through four things you should know about international trade marks.
1. Benefits of an International Trade Mark
There are many benefits to registering an international trade mark. Whether you already operate your business overseas or plan on expanding into overseas markets, it is a good idea to consider international trade mark registration. For example, some of these benefits include:
- giving your brand protection by preventing other businesses from making or selling your product;
- expanding your business opportunities by giving you entry to overseas markets; and
- ensuring you are not infringing on someone else’s trade mark before operating overseas.
Above all, for businesses with international operations, the benefits of an international trade mark likely far outweigh the cost and effort of international trade mark registration.
2. International Agreements
Two key international agreements concern trade marks. You can find these conventions and their purpose in the table below:
| Paris Convention | This Convention has more than 177 member states, including Australia. This Convention allows for priority filing for applications from other member states. For example, an Australian business making a trade application in a country party to the Paris Convention within six months of their Australian trade mark application will be deemed to have registered their trade mark at the date of their Australian application, not their overseas application. This allows them to claim priority for an earlier registration date. |
| The Madrid Agreement | The Madrid Agreement and the subsequent Madrid Protocol makes up the World Intellectual Property Organisation’s (WIPO) ‘Madrid System’. This allows you to register your trade mark in multiple countries in one application. This makes applying for international trade mark registration easier and more cost-effective. |
3. How to Register
It is important to note that there is no single trade mark application that will cover you in all countries internationally. However, the Madrid System allows you to apply for a trade mark in up to 124 member countries using just one trade mark application. However, while the Madrid Protocol is a convenient and cost-effective way to gain international trade mark protection, it still does not provide you with a single international trade mark. Instead, the WIPO merely examines your trade mark application before passing it on to each contracting country, which will also have the opportunity to examine your application under their own trade mark system.
It is also worth noting that if you want to register your trade mark in a country that is not a part of the Madrid Protocol, you will have to apply to register with that country’s own intellectual property office directly. There are also more regional-specific trade mark application options. These include the European Union’s Intellectual Property Office (EUIPO) and the African Regional Intellectual Property Organisation (ARIPO). The registration method most relevant to you will depend on your business’ unique circumstances.
4. Adding Other Countries
One great benefit of international trade mark registration is that you can add additional contracting parties to your application later without making an entirely new trade mark application. This is an excellent option for businesses considering expanding their business one day but currently have no clear plan. To add another country to your trade mark application, you will need to apply through the WIPO’s subsequent designation system.
Key Takeaways
Having an international trade mark can be an excellent way to expand your business safely. Therefore, some important things to know about international trade marks are:
- the benefits of an international trade mark;
- the relevant international agreements;
- how to register; and
- the ability to add other countries to your application.
If you need help filing an international trade mark, our experienced trade mark lawyers can help. Get in touch with them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
Having a trade mark registered overseas is a great way to protect your brand on an international scale. With international trade mark registration, you can expand your business overseas while stopping other businesses from making, using, or selling your product.
You can register your trade mark overseas by either applying directly to a country’s IP office through regional IP offices or applying through the World Intellectual Property Organisation (WIPO) using the Madrid Protocol. The Madrid Protocol refers to the international treaty that lets you apply for several international trade marks using just one application.