INTERNATIONAL TRADE MARK REGISTRATION
There are two different ways you can seek trade mark protection overseas. You can file an application directly with each country, or you can file a single international application with IP Australia nominating the relevant Madrid Protocol countries in which protection is required.
The costs are calculated in Swiss Francs and translated to Australian dollars using the IP Australia fee calculator.
The Madrid Protocol is a treaty that provides for international registration of trade marks. It is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva.
The Madrid Protocol also allows trade mark owners overseas to designate Australia in their international applications.
The Madrid Protocol only covers a few Asian nations who are signed up to the Madrid Protocol.
As an Australian trade mark owner seeking trade mark protection in other countries that are also members of the Madrid Protocol, you can make a single international application in English. This can be simpler and less expensive than applying directly to each country.
You only need to make a single request to make changes to or renew international registrations.
When your international registration is granted protection in a designated country, your trade mark will have the same protection that would be extended to a national registration in that country.
Another benefit of international registration is the ability to make subsequent designations in other Madrid Protocol countries at a later date.
HOW LONG DOES AN INTERNATIONAL REGISTRATION LAST?
Your international registration is protected for a period of 10 years from the date of registration. The date of registration is usually the date the international application was received by the office of origin. Your international registration can be renewed every 10 years upon payment of the relevant fee.
EFFECT OF INTERNATIONAL REGISTRATION
From the date of filing of the International Application it shall have the same effect as a national filing in each of the designated Contracting Parties.
REQUIREMENTS FOR AN INTERNATIONAL APPLICATION
The application must:
- be filed through the office of origin
- be based on a registration or an application for registration filed with the office of origin by the same person, and
- designate the Contracting Parties in which protection is sought
An International Application must be based on an application for registration or on a registration for the same trade mark in the ‘home’ country. It must be filed through that country’s Trade Mark Office, which is known as the office of origin. At least one contracting party must be designated in the International Application. The Country of Origin cannot be designated.
Please contact me if you have a trade mark which needs protection.
Please contact Sweeny Legal or Brandsworth Licensing should you require any assistance with any Intellectual Property (IP) rights, Commercial Agreements of any type or
IP Business Strategies.
Phone: 02 4228 1864
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