- International Trademark Registration is a complex and time-consuming process.
- There are two different paths you can take when you are applying for international registration.
- The first path is applying directly to each country in which you want to register your mark.
- The second is by filing a single international application with IP Australia. IP Australia can select the appropriate Madrid Protocol nations in which you require trademark protection.
The Madrid Protocol is a treaty between countries that allows for International Trademark Registration. It is managed by the International Bureau of the World Intellectual Property Organisation (WIPO), situated in Geneva. The Madrid Protocol permits overseas trademark holders to elect Australia in their own international applications, just as Australians are able to elect other nations.
In either case, applying for international trademark registration is a complicated process. We offer you the service of applying for international registration on your behalf. Contact us for further information.
The Benefits of International Trademark Registration
If you are an Australian trademark holder applying for international trademark registration in overseas countries that are also members of the Madrid Protocol, you are able to file a single international application in the English language. This is less complicated than applying directly to each country that you wish to be protected in.
Once you have filed your application through IP Australia, you can make requests to make changes to your international trademark registration or renew your registration. You may also add subsequent applications in other Madrid Protocol nations in the future once you have been granted registration. After you receive international registration, your trademark is granted the same protection as national trademark holders do within that nation.
Your international trademark registration lasts for a time period of 10 years from the time you are granted registration. Your international trademark registration can last indefinitely with timely renewals. There are some fees for international registration renewal: details can be found on the IP Australia websites.
Your International Trademark Registration Requirements
Your international trademark registration application needs to:
- Be filed through the relevant office (office of origin)
- Be based on the registration or application for registration filed by you through the relevant office (office of origin)
- Outline the nations in which you seek protection
Your international trademark application needs to be based on your application for registration, or on your current registration, of your trademark within Australia. You must file your application through the Australian Trademark Office, which is referred to as the office of origin. You must specify at least one party besides your country of origin on your international application. You cannot specify your country of origin
Understanding Country of Origin
Some specified countries will insist that you nominate an address for service in their own nation should they issue grounds for rejection against your international registration. The offices of these nations will advise you of their requirements to overcome rejection, should this occur. We can offer you the service of refuting these grounds for rejection, or in taking measures to overcome them.
Changes to Your International Registration
You cannot request to make changes to your international trademark application before it has been noted on the International register and been designated an international registration number.
When requesting to make changes, you can write directly to the International Bureau, or though IP Australia. Changes may include:
- Alteration of the holder’s name or address
- The appointment of a new representative
- A change in the specified goods or services
- An alteration in the ownership of the registration
- Adding subsequent designations
If you need to change the details of your international application, contact IP Australia.
Understanding Subsequent Designations
Once you are an internationally registered trademark holder, you can add countries to your registration at any point in time. You may choose to do this as your markets expand, or as other desirable countries join the Madrid Protocol.
You can request subsequent designations though the International Bureau or through IP Australia. You will need to file separate forms and pay separate fees.
Renewing Your International Trademark Registration
According to the Madrid Protocol, you will need to renew your international registration every 10 years. Your date of international trademark registration is recorded with the International Bureau: they will notify you of your expiry date six months in advance. You can make payment up to six months after the expiry date, but penalty fees for later payment apply.
Changing Ownership of Your International Trademark Registration
As the owner of international trademark registration, you can apply to designate part of that registration to another party.
The International Bureau can only record a change in ownership as a whole or in part when the other party is a person or entity who is applicable to file an international application. The new party must possess one of the following:
- A legitimate and effective business in a contracting party
- A residence in a contracting party
- The nationality of a contracting party
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.
Disclaimer – 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.