Trade mark registration operates on a country-by-country basis. As such, having an Australian trade mark registration does not prevent international competitors from registering a similar or identical trade mark in other countries. It is therefore important to protect your brand overseas by conducting searches of the Global Brand Database and specific country’s trade mark registers and filing international registrations for your trade mark.
What is the Global Brand Database
The Global Brand Database is a free, publicly accessible collection of over 52 million records from over 73 national and international data sources. It is a useful research tool to find out whether a mark similar or identical to yours already exists that may present issues for your brand expansion plans.
How can I file a trade mark application overseas?
Brand owners can file national applications directly with a country’s trade mark office or file an application for an international registration via the Madrid Protocol.
As not all countries are a signatory to the Madrid Protocol, it may be necessary to file national applications or adopt a filing strategy that involves filing a combination of national applications and an application for an international registration via the Madrid Protocol.
What is the Madrid Protocol?
The Madrid Protocol is an international treaty that provides the basis for an international registration system for trade marks. Filing an application through the Madrid Protocol allows a brand owner to obtain coverage in multiple jurisdictions by filing a single application. To file an application through the Madrid Protocol, you must have a currently pending application or registration in your “home” country.
To be eligible to use your Australian registration or application as a base for your Madrid Protocol application, you must:
- Have a real and effective industrial or commercial establishment in Australia;
- Be living in Australia; or
- Be a national of Australia.
How much does it cost to protect a trade mark overseas?
When seeking protecting trade mark protection overseas, there are several factors to consider that will affect your costs, including:
- The number of classes of goods and/or services you need your application to cover;
- The countries where you wish to register your trade mark;
- Whether you apply via the Madrid Protocol or whether you file national applications directly with each individual country’s trade mark office;
- If you will use a trade mark professional to help with the process; and
- Whether there is a need to engage a local agent to assist with the filing and prosecution of the application.
Do I need to use a lawyer to file trade mark applications overseas?
No, however devising an international filing strategy and filing trade mark applications overseas can be complicated and expensive. Rouse Lawyers have specialised and highly experienced trade mark lawyers who can devise a cost effective filing strategy and manage the process from filing through to registration allowing you to focus on running your business.
Get in touch to discuss your overseas trade mark protection needs today.
Disclaimer
The information contained on this website is for general guidance on matters of interest only. The application and impact of laws can vary widely based on the specific facts involved.
Accordingly, the information on this site is provided with the understanding that the authors and publishers are not providing legal advice. As such, it should not be used as a substitute for consultation with professional legal advisers. Before making any decision or taking any action, you should consult with a professional lawyer from Rouse Lawyers.
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