Today’s digital world means it is now easier than ever for a business and its trade marks to make an impact on international markets. While a registered trade mark in Australia provides intellectual property protection within our borders, it doesn’t offer the same protection overseas.
Businesses don’t necessarily have to be actively exporting to overseas markets to require international trade mark protection. A trade mark is only protected within each country it is registered, and as the Internet is considered to be a global marketplace a number of protection issues can arise.
While some businesses may look at filing for a registered trade mark application in other countries directly, there is a more cost-effective solution which can file a trade mark application in a range of countries, offering greater protection for your intellectual property.
Why should I consider an international trade mark application?
Simply protecting intellectual property in Australia alone is not a sufficient solution for the global business world. Whether or not your business is actively looking to export physical products to other countries, your trade marked goods and services still need to be protected from potential infringements.
As registered trade marks in Australia protect intellectual property use on the internet only within Australia, businesses looking for complete protection should consider an international trade mark application.
While it is possible to individually file a trade mark application in each individual overseas market you feel you need protection in, a Madrid Protocol application can allow you to apply for a trade mark in multiple countries with one application.
What is a Madrid Protocol trade mark application?
A Madrid Protocol trade mark application allows businesses and individuals to protect their intellectual property in international markets after registration.
Before setting up a Madrid Protocol trade mark, applicants need to ensure that whatever they are trying to trade mark internationally can be registered in Australia. This is because the locally registered trade mark will be the basis for the international trade mark application.
Applicants need to ensure the trade mark that will be the subject of the Madrid Protocol application is identical to the one that is registered and protected in Australia.
The applicant for the Madrid Protocol trade mark application must also be the same as the business or individual that owns the registered trade mark in Australia.
How can a Madrid Protocol trade mark application benefit businesses?
One of the most notable benefits of Madrid Protocol trade mark applications is the time for which they last. Provided an application is successful, a registered trade mark can offer up to 10 years of protection in each of the selected countries. After the protection period the trade mark can then be easily renewed once the relevant fees are paid.
The Madrid Protocol trade mark application also reduces the need for overseas lawyers. While other countries can reject a trade mark application if it doesn’t meet their local laws, the entire application process can be completed by intellectual property lawyers in Australia.
In our experience, these trade mark applications can be between 50 and 60 per cent cheaper than pursuing individual protection in each country. These blanket applications mean that all bases are covered at once.
If a Madrid Protocol trade mark application is rejected by a specific country, it’s possible for an individual or business to make the necessary changes for approval without the need for extra unnecessary legal representation.
When one of these trade mark applications is approved in a specific country, that good or service is then afforded the exact same protection as any locally-registered trade mark for that region.