Around the world: International trade mark registration 

Trade mark protection is a territorial right. If you register a mark in Australia, you are entitled to enforce that mark in Australia. 

If you use, or intend to use, your marks in other countries, it is important that you obtain trade mark registration in those jurisdictions. 

When entering a foreign market, businesses often encounter the following issues:

  • a person squatting on their trade mark; and
  • counterfeit goods/piracy.

Therefore, a business should promptly attend to international trade mark registration in order to prevent, or mitigate the impact of, the above issues. 

Below, we discuss the options available to file internationally, and the pros and cons of doing so.

The Madrid System

The Madrid System for the International Registration of Marks (Madrid System) allows you to easily file multiple international trade mark applications. The Madrid System is administered by the World Intellectual Property Organization and is available online. 

In order to apply, the applicant must own a “parent” application in one of the participating countries. For example, if you have filed a trade mark application in Australia, you can rely on that application in order to file further international applications through the Madrid System. 

106 countries participate in the Madrid System, including China, France, Germany, India, Japan, Indonesia, New Zealand and the United Kingdom.

Although the Madrid System is convenient, it can cause a variety of issues for the applicant. 

Trade mark examination differs from country to country. Just because your “parent” application succeeded in Australia, does not mean it will succeed in China or the USA.  If the Madrid System applications are refused, you will need to engage foreign counsel in order to correspond with the relevant trade mark office. 

Further, as your international applications are dependant on the “parent”, should the “parent” be refused registration or successfully challenged, all your international applications will fail. 

Other options

Given the problems associated with the Madrid System, a better option may be to engage foreign counsel to prepare your international application. For example, if you intend to register in the USA, you can retain a USA lawyer to prepare and file the application. 

The benefits of this are:

  • the ability to customise the application in order to satisfy examination requirements in the USA; 
  • the USA application is not dependant on a “parent” application; and
  • the USA lawyer can receive notices from, and reply to, the USA trade mark office should an issue arise. 

Lavan comment

Which option you go with will depend on a variety of factors (including budget). Given the issues discussed above, engaging foreign counsel to prepare your applications is best practice.

However, if your international applications are relatively simple, and being filed in countries with a similar legal system to Australia, the Madrid System offers an affordable and convenient option.

If you are contemplating expanding overseas and require advice on international trade mark protection, do not hesitate to contact Iain Freeman or Andrew Sutton

Disclaimer – the information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.