Registering a trade mark in Australia is an important first step for many new businesses – helping to protect you from infringement on your intellectual property. However, an Australian trade mark is limited by jurisdiction. That is, it only protects you from anyone trying to use your trade mark within Australia.
Should you decide to penetrate overseas markets, you'll need to investigate international trade mark registration processes. This is where the Madrid Protocol comes to your aid.
Let's explore what the Madrid Protocol is and what it means for Australian businesses.
What is the Madrid Protocol?
The Madrid Protocol is an international system organised by the World Intellectual Property Organisation (WIPO). In short, it's an intelligent system designed to enable businesses to acquire trade mark protection in up to 120 participating countries using a single application and one set of fees. The Madrid Protocol allows you to modify, expand and renew international trade marks using one centralised system, rather than filing trade mark applications in numerous different regions.
What countries participate in the Madrid Protocol?
There are over 100 different countries participating in the Madrid Protocol, as well as three broad regions. Some of the most important ones for many Australian businesses include:
- The United States of America.
- New Zealand.
- The European Union Intellectual Property Office (EUIPO).
- China.
- Japan.
- The United Kingdom.
- Singapore.
- The Republic of Korea.
- Thailand.
- India.
Other large member regions (besides the EUIPO) are Benelux, which comprises Belgium, the Netherlands and Luxembourg, and the African Intellectual Property Organisation (OAPI), representing 17 African countries.
It's important to note that Malaysia, a key market for many Australian businesses, is not a member of the Madrid Protocol and therefore trade mark applications must be filed separately for these countries. Canada has recently joined the treaty, making the market much more accessible for Australian businesses. Meanwhile, we recommend organisations looking to file for trade mark protection in the United Kingdom file a separate application, due to the uncertainty created by Brexit.
How can I acquire international trade mark protection with the Madrid Protocol as an Australian business?
To file an international trade mark application via the Madrid Protocol, it's important to seek the assistance of trusted intellectual property attorneys such as the team at Alder IP. They can help you navigate the process and prepare and issue-free application to save you time, money and stress.
In order to apply through the Madrid Protocol, you must first have a registration in Australian on which to base your international application. You must then file via the Office of Origin – in our case, this is IP Australia. The Office will review your application and notify of any issues to be rectified in necessary. Once no issues are outstanding, IP Australia will submit your application to WIPO for review, who will then coordinate with the relevant local offices to review and approve your trade mark.
For more information about interntional trade mark processes, visit Alder IP's trade mark process flowcharts.
Once approved, your international trade mark is protected for 10 years from the date of registration.
Who is eligible?
Any Australian business or resident may apply via the Madrid Protocol, provided they have an existing Australian trade mark registration and meet local entitlement requirements. In addition to this, the international application must share the following identical traits with your existing Australian registration:
- The mark itself.
- The classes of goods and services (Nice classification).
- The applicant's name.
What are the key advantages and disadvantages of the Madrid Protocol?
Like all things in life, the Madrid Protocol isn't perfect. It's pays to be aware of the pros and cons of applying via this system.
Advantages of the Madrid Protocol
- The costs are likely to be significantly less than when applying to individual states.
- Strict time limits apply to Protocol applications, meaning you may find protection can be obtained more quickly than by the national route.
- Ongoing changes are much easier to manage when centralised with WIPO.
- An international registration can replace corresponding local protections without consequence.
- You only need to file a single application to acquire, modify or renew trade marks.
Disadvantages of the Madrid Protocol
- The first five years from the lodgment of your international trademark are considered "the dependency period". If your local trade mark expires, is refused, withdrawn, removed by non-use action or narrowed, IP Australia will notify WIPO of these changes and your international trade mark will be canceled or modified to the same extent.
- If you wish a sell your trade mark within one region covered by your international registration, you will first have to transfer it into a local mark for that area and sell it according to the local trade mark laws. This can be expensive and complex.
- Some countries may be faster to approve a trade mark at a local level than via WIPO. Meanwhile, not all countries will notify you if your mark has been accepted.
The Madrid Protocol is an extremely valuable system, enabling Australian organisations to expand and protect their intellectual property with greater ease – but it must still be navigated with experience and knowledge. Don't go out into the world alone – talk to Alder IP today about protecting your trade marks in Australia and abroad.