Is a Trade Mark Registered in the US Valid in Australia?
George Raptis
In the US and Australia, trade mark registration can protect a business name, logo, slogan or anything else that differentiates your business’s goods and services from others. However, a trade mark you registered with the US Patents and Trademarks Office (USPTO) will not enjoy protection in Australia unless you apply for additional protection. To help you consider whether you require additional protection, this article explores the similarities and differences between trade mark protection in the US and Australia. Additionally, we will outline various ways you can apply for additional IP protections.
Similarities and Differences in Trade Mark Protection
Generally, trade mark registration and protection in the US is similar to Australia. We explore these similarities and differences below.
Pursing Action for Infringement
By registering your trade mark in the US, you are presumed to have the right to use the trade mark nationwide. So, you can pursue a claim for trade mark infringement if someone:
- uses your trade mark without your authorisation; or
- in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and services.
Similarly, trade mark registration in Australia provides you with the exclusive right to:
Consequently, you could pursue a trademark infringement claim where a trader uses a sign that is substantially identical or deceptively similar to your registered trade mark. Moreover, if it concerns the same, or closely related, goods or services class, your trade mark falls under.
First to Use Rule
Both the US and Australia follow the first-to-use rule. This rule is essential when two or more parties claim rights to the same unregistered trade mark. In this instance, the first-to-use rule deems that the person who first used a trade mark commercially will likely be able to claim IP rights.
Use Requirements In Your Application
However, there is a main difference between each trade mark application process. Namely, when you register your trade mark in the US, you must provide the USPTO with samples of the goods and services for which protection is sought. This is unlike Australia, where you generally do not have to demonstrate the use of your trade mark in your application unless a third party challenges you.
International Trade Marks
If you have registered a trade mark in the US, the best way to protect your brand in Australia is to file for international registration. If you only want protection in Australia, it is generally more cost-effective to file a direct application with IP Australia. Alternatively, if you want to register your trade mark in at least three different countries, you should consider filing a Madrid Protocol application.
Direct Trade Mark Application
There are two main standard trade mark application pathways in Australia. Namely, you can file a standard trade mark application via IP Australia’s online services. In your standard application, you must include the following:
- your personal information;
- a description, a representation of your trade mark; and
- a description of the goods and/or services to which it will apply, including the list of the relevant trade mark classes.
Once you file your application and pay the relevant fee, you will receive a trade mark filing number. IP Australia will examine your standard application four to five months after filing.
On the other hand, a TM Headstart application provides you with pre-assessment services. That is to say, an examiner at IP Australia will review your application before you file it with IP Australia. This can allow you to identify any potential issues in your application and make changes accordingly. This is particularly useful given you cannot substantially amend your trade mark or nominated classes once you have filed it.
Typically, your assessment will arrive within five working days from filing. You can then choose to formally continue with your trade mark application by paying the ‘Part 2’ fee within five working days per the preliminary assessment results.
Madrid Protocol Application
Suppose you want to register your US trade mark in at least three international countries. In that case, a Madrid Protocol application can be a simpler and cheaper alternative to applying directly to each country.
To apply through the Madrid Protocol, you will need to have:
- a trade mark registered with USPTO; or
- an application filed with USPTO.
However, you must apply through your ‘country of origin’. In this sense, USPTO must certify the application and forward it to the World Intellectual Property Organisation (WIPO).
While you may receive international registration, you should know that the discretion remains the right of each country to determine whether or not to grant protection for your trade mark. For instance, only once IP Australia grants protection do you gain trade mark protection in Australia.
Key Takeaways
A trade mark you registered in the US will not be protected in Australia unless you apply for additional protection. You can apply for trade mark protection in Australia by filing a:
- direct trade mark application with IP Australia; or
- Madrid Protocol application.
If you wish to apply for a trade mark in Australia, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
The Madrid Protocol allows you to obtain trade mark protection in several countries using a single application. However, you can only gain International Registration in the countries which have joined the system.
Since the cost of an application will vary depending on your circumstances, you can use the Madrid Fee Calculator to estimate your fees.