Is My Australian Trade Mark Valid Worldwide?
Emily Young
A trade mark is an important intellectual property (IP) asset. A trade mark distinguishes your goods and services from your competitors. This allows you to grow your brand and expand your business.
Applying for trade mark registration with IP Australia is an important consideration for Australian businesses. However, as more businesses expand their offerings overseas, it is becoming more important to consider having a trade mark protected overseas. This article will take you through protecting your trade mark in other countries.
Is My Australian Trade Mark Valid Worldwide?
Your Australian trade mark is not automatically valid worldwide. If you have registered a trade mark with IP Australia, it will only be placed on IP Australia’s trade mark register. IP Australia will protect your Australian trade mark nationwide, but if you wish to extend the scope of your protection beyond Australia, you will need to consider international trade mark registration.
Benefits of Registering an International Trade Mark
There is a multitude of benefits to registering an international trade mark. With more Australian businesses offering their goods and services overseas, the need for international trade mark registration continues to grow. Having an international trade mark is an excellent way to protect your brand when trading on an international scale.
Even if you do not want to expand your business overseas, having an international trade mark may help facilitate licensing your trade mark to international businesses, helping your brand become known beyond Australia.
How to Register an International Trade Mark
While there is no single trade mark application that will protect your trade mark in every country worldwide, there are two ways in which you can register an international trade mark. This includes either:
- applying via the Madrid System, which allows you to apply for trade mark registration in up to 126 countries with one application; and
- applying to countries directly.
Madrid System
Applying for a trade mark through the Madrid Protocol will allow you to apply to register your trade mark in multiple countries with just one application. This is particularly useful if you plan on trading in multiple countries worldwide. The World Intellectual Property Organization (WIPO) will first examine your application for formalities. They will then pass it on to each country you have nominated. Each of these countries will then examine your trade mark under their own trade mark system to determine its suitability for registration.
The fees for filing via the Madrid Protocol will vary depending on the number of classes covered in your application and the countries you are applying to.
Applying to Countries Directly
Where a country is not part of the Madrid Protocol, you will have to apply for trade mark registration to that country directly. Thus, this may be a good strategy if you only want to register a trade mark in one country overseas. The fees associated with this will vary depending on the country you are applying to. Suppose you decide to apply to countries individually. In this case, you should consider seeking advice from a trade mark professional to help with the process.
How Long is My Trade Mark Valid For?
Irrespective of whether your trade mark is registered in Australia or overseas, most trade marks are valid for 10 years. This 10 year period commences the date you file your trade mark application, rather than the day it is registered. After 10 years, you can renew your trade mark for another 10 years.
It is important to have a good trade mark management system, particularly if you are applying for trade mark registration in numerous countries worldwide. This will ensure that you do not miss any renewal periods and subsequently lose the rights to your trade mark.
Key Takeaways
Having international trade mark registration can be a great way to expand your business internationally while protecting your brand. Additionally, some key things to note about worldwide trade marks include that:
- your Australian trade mark is not valid overseas;
- registering a trade mark overseas gives you a great entry point to overseas markets; and
- you can register your trade mark internationally either through the Madrid System or by applying to countries directly.
If you need assistance registering a trade mark overseas, our experienced trade mark lawyers can help. Give them a call on 1300 657 423 or fill out the form on this page to get in touch.
Frequently Asked Questions
Having a trade mark registered internationally is an excellent way to protect your brand on an international scale. International trade mark registration allows you to expand your business overseas and prevent other businesses from misusing your brand.
You can register your trade mark internationally by applying directly to each country’s IP office. Alternatively, you can apply through the World Intellectual Property Organization (WIPO) under the Madrid Protocol, which will allow you to file a single application in multiple member countries.