3 Steps to Protect Your International Trade Mark Under the Madrid Protocol

Angus

• 22 July 2021
• 17 August 2021
• 5 min read

Suppose you have a business in Australia, and you are considering expanding overseas. You naturally will want to bring your registered trade mark into your overseas business. However, having a trade mark in Australia does not automatically grant protection in another country. You must take active steps to have it recognised overseas. The Madrid Protocol is an international agreement that a number of countries have adopted, which sets out the framework for protecting trade marks internationally.

If you want to protect your international trade mark, this article will explore some of the key considerations before registering an international trade mark through the Madrid Protocol.

1. Apply With IP Australia

Before registering a trade mark overseas through the Madrid Protocol, you must first register your trade mark with IP Australia. Your Australian trade mark is called the basic trade mark. After receiving registration in Australia, you can then apply for international protection through IP Australia with your basic trade mark, which will certify and forward it to the World Intellectual Property Organization (WIPO).

Prior to applying, you can conduct a search to see whether identical or related marks already exist (or are subject to approval) in your target countries. You can search for Australian trade marks here and for international trade marks, the WIPO keeps a database of international trade marks.

2. Formal Review by the WIPO

The WIPO will then subject your application to a formal review. Once the WIPO accepts your trade mark, it is entered into the International Register and published in the WIPO Gazette of International Marks. WIPO will then give you an international registration certificate, and contact the intellectual property offices of the countries you have selected in your application for trade mark protection.

It is necessary to remember that at this point in the process, your trade mark is not comprehensively protected overseas. Your application must first be accepted by the respective intellectual property offices that you have applied to.

3. International IP Offices Review the Trade Mark

In compliance with their domestic laws, the intellectual property offices of the territories where you want to register will decide whether to accept your trade mark. WIPO will record the decisions of the intellectual property offices in the International Register, who will then notify you.

Suppose an intellectual property office declines to accept your trade mark in whole or in part. This action does not affect the decisions of other offices. In accordance with domestic regulations, you may challenge a refusal decision directly before the relevant intellectual property office. 

Your overseas trade mark registration is valid for 10 years. You may renew your registration directly with WIPO at the end of each 10-year term.

Trade Mark Classes

You must also consider trade mark classes when applying for overseas protection through the Madrid Protocol. Trade mark classes are specific categories of goods and services. Your trade mark protection only applies to the classes that you select in your application.

You may ask for a restriction on the list of products or services available for a specific country. You may decide to vary the classes that you apply under in your overseas trade mark application. For example, you can choose to include classes 2 and 26 in one country. You can then restrict the list to only class 26 in another. 

WIPO will check your international application and will inform you if they find selected classes of products and services to be too ambiguous, incomprehensible, linguistically inaccurate, or incorrectly listed. They may request that you simplify or restrict your products or services, provide additional details, or provide a different class to register under.

Your basic trade mark must cover any classes of goods and services you apply under in the Madrid Protocol. You cannot add a new class of goods or services to your overseas trade mark. However, your overseas trade mark can include less classes than your basic trade mark.

Key Takeaways

Before registering your international trade mark under the Madrid Protocol, there are several steps you must take. First, you must have a registered trade mark in Australia to serve as your basic trade mark. After that, you can commence the process of registering your trade mark overseas. Ensure that you review the registration requirements of the foreign jurisdictions you want to register in, and obtain legal advice if you have any questions or concerns. If you have any questions about protecting your international trade mark under the Madrid Protocol, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions