If you have your trademark registered in Australia, it may be vulnerable if it is not registered internationally.
Prior to the Internet, it was not such a crucial business mistake if you did not register your trademark internationally.
Today’s online market place means businesses often have a global presence. Someone using your trademark in an overseas country can be as disastrous to your business as if they were trading in the same street as you in Australia. An international trademark strategy that leverages your brand and business, while protecting your trademarks internationally will ensure your business assets cannot be diluted.
Quick off the Mark® suggest you consider the following 7 international trademark registration facts.
1 Why international trademark protection is important
Your business trademarks can be some of your most valuable assets. They can include:
- The name of your company,
The name of your service or product,
A tagline, and
Package and product designs.
An Australian trademark registration does not give the trademark owner any rights outside of Australia.
If your business exports or plans to export goods and services in the future, and it’s not registered internationally in your key markets, you may lose sales or get involved in legal disputes.
2 There is no such thing as a worldwide trademark
There are essentially two ways to secure protection of a trademark outside of Australia.
- The filing of national applications to each country of interest. This will usually require the engagement of an appropriate agent/attorney in each particular country chosen; or
- The filing of a single application seeking international registration through the Madrid Protocol and designating the other ‘member’ countries of interest. This application must be based on your national (Australian) application when filing from Australia.
Quick off the Mark® suggests where possible and appropriate, the Madrid Protocol application is the simplest and most cost effective trademark method.
In 2001 Australia joined the Madrid Protocol and since then it has been possible to file a single application through the treaty and simply designate the other protocol members you wish to extend your trademark registration into.
Using the Madrid Protocol application to register your international trademark protects your business and brand equity and gives you peace of mind for future business expansion.
Likewise, since 2001 applicants who have a national application in another protocol member country may file a single application designating Australia.
3 Who can file an international trademark?
When filing from Australia and through the Australian trademarks office (known as the Office of Origin) the applicant must:
- Be an Australian national; or
- Be domiciled in Australia; or
- Have a real and effective industrial or commercial establishment in Australia.
If the international trademark applicant’s address is not in Australia they will be asked to provide the address details of their establishment in Australia.
4 The international trademark application process
When Australia’s government office is acting as the Office of Origin, the international application must be based on an Australian trademark or trademarks, in the same person/s name/s.
The international application must be for the same goods/services, or a limited version of the Australian goods/services.
The application for a trademark to be registered internationally undergoes a formalities examination at the International Bureau in Geneva. It then undergoes examination by each country’s office based on the law of each country designated.
These designated countries must review the international registration within either 12 or 18 months from the filing date of the application for international registration.
When your international registration is granted in the designated country, your trademark will be granted the same protection as a national registration in that country.
The Madrid Protocol application process makes it possible to record subsequent changes or to renew the registration centrally in a single step and using a single currency.
This can make it cheaper and easier than the alternative of filing individual registrations in separate countries. Not every country is part of the Madrid Protocol so in some instances it becomes necessary to file a national application in that country of interest.
It is important to note that International Trademarks filed via the Madrid Protocol are dependent on the basic application for the first five years (e.g. Australian trademark).
Any cancellation or restriction that the basic Australian trademark may experience during those five years will affect the International Registration to the same degree.
If you have interest in protecting your trademark outside of Australia, please contact Quick off the Mark® here for a quote.
5 When should you register international trademarks?
Your trademark is your key to brand equity and good will. The global nature of business today means that it is essential you have control over your brand and subsequent goodwill on a global level.
This level of control can only happen if you register your trademark in a number of key countries internationally or with the countries you know will be strategic to your business success.
Quick off the Mark® suggests as soon as viable you file an application through the Madrid Protocol, or where necessary file your direct applications with the national offices in each country.
This single application saves you time and money as we avoid the need to employ agents and/or attorneys in each country when nominating the relevant countries under the Madrid Protocol. For this to happen, you need to apply or register your mark within Australia first.
This will usually grant you the ability to extend your registration over any of the 95 (approximately) nations that are available under the Madrid Protocol. Due to the ‘dependency’ that your International Application will have on the Australian trademark we suggest ensuring your Australian trademark is at least accepted before investing in an international application under the Madrid Protocol.
If you have recently filed an application in Australia (within the last 6 months) you may be eligible to claim priority in foreign applications.
International departments will effectively treat your overseas trademark application as though filed on the same date as in Australia even if physically filed later – thus providing you priority over later applications in those jurisdictions. This priority claim can only be included for a strict period of up to 6 months from your earliest filing in Australia.
Quick off the Mark® can attend to the international application for you.
6 Where should you file international trademark applications?
Tip: Remember trademarks become vulnerable to removal if they are not used after a certain period of time within the particular country; accordingly Quick Off the Mark® encourages registration only in jurisdictions where you use or intend to use and promote your trademark
In addition to protecting your trademark in countries where you sell, or plan to sell, your products or services, you must also consider giving protection to your mark in countries where you manufacture or develop your products, particularly if it is a first-to-file country.
A first-to-file country means that the person who filed a trademark application and gets that registration will usually have priority over someone who can show prior trademark use. In first-to-file countries, the use of a mark without registration is not needed to get
In first-to-file countries, the use of a mark without registration is not needed to get registration of that mark.
This means that it is important to file your trademark as soon as possible so you minimise the risk of other people obtaining rights to your mark.
China is a usual example of a first-to-file country. Other people can file for your trademark in China and even if you can demonstrate earlier use there may not be anything you can do to achieve the right to use or register your mark in China.
What is a first to use country?
Some countries including the United States, United Kingdom and Australia follow a common law system.
This first to use system means that the first person to use a trademark may have priority over a person who files a trademark application at a later date.
The USA system will allow for cancellation of a registered trademark by the first user of the mark. Australia allows for trademark oppositions to succeed on the basis someone other than the Applicant is the first user of the mark – and Australia will also allow co-existing registrations for the same or similar trademark where the later filer can demonstrate they are actually the first user.
Choosing where to file your trademark internationally is in large part a business decision.
Quick off the Mark® suggests you consider the following:
- Which countries could contribute to your business growth?
- Have you got business operations, including manufacturing overseas?
- Do you have plans to grow your business in a particular region or country?
- Does your industry have high rates of piracy, copycats and counterfeits? (If it does Quick off the Mark® suggest you consider “defensive” filings in countries including India, China and Brazil.)
7 What happens if someone else registers my trademark in another country?
If another party registers your trademark before you in a country outside of Australia, as well as potentially losing the right to use the mark, the registrant may also:
- Disrupt the manufacture, shipment, or distribution of your products in or from the country
- Use, or license others to use, the trademark on a competing or copycat product
- Hold the trademark “hostage” and extort a high purchase price from you.
The effect of this on your business can be costly, financially and to your goodwill and brand recognition, especially if you have to adopt a different brand name in that country.
Need help with your international trademark registration?
Quick Off the Mark® and parent company Mark My Words have handled a large number of international trademark applications for clients and have successfully overcome hurdles in conjunction with our network of international associates where needed.
Contact us here to discuss your international brand protection and see how we can cost effectively assist.
The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs
Quick Off the Mark is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.