A trade mark is essentially a marker of business identity, a badge of origin, to differentiate your goods or services from others in the market.
Registering a trade mark is important as it provides you with the exclusive rights to use, license and sell the mark (without other businesses riding on the coattails of your brand’s success or diluting your brand’s strength of reputation in the market).
When establishing or growing a business, it’s important to consider where you wish to have your brand recognition and reputation protected.
The general rule for trade mark protection is that you need to register your intellectual property in the jurisdiction in which you wish to have protection. For example, a trade mark registered in Australia only provides protection within Australia.
If you want protection of your trade mark in the USA, then you need to apply for the trade mark to be registered there.
With the established global economy, a lot of Australian businesses are now trading overseas. It could be New Zealand, Singapore, USA, UK, Europe, etc.
Without knowing, you actually might be breaching someone else’s registered trade marks without checking first.
There are two ways an Australian trade mark owner can seek trade mark protection overseas:
Be careful when making an international trade mark application as they can be an expensive (find out more about international trademark costs here) and technical process. It is important to weigh the commercial viability of making a potentially expensive application, versus mitigating the risk of trademark infringement in overseas markets.
Also, other countries (such as the USA) have much more aggressive and litigious intellectual property dispute resolution processes than that in Australia. Accordingly, we strongly recommend that you engage legal advice with experience in this area prior to making any international trade mark applications. It’s best to be aware of your rights and obligations before taking any steps towards registering your trade mark overseas.
If you intend to sell your products or services internationally, getting international trademark protection can be a valuable brand investment.
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“Ian and his team have been invaluable in assisting me with my terms and conditions. He’s my in-house lawyer and go-to guy for tricky legal situations.”
You can protect your brand in multiple countries by either applying for trade mark rights in each country separately, or by filing an international trade mark application under the Madrid System.
Both options have advantages and disadvantages, and the circumstances surrounding your trade mark such as the likeliness of receiving an objection or the number of countries you wish to file your trademark into can really make one option more suitable than the other.
Considering expanding your trade mark protection? Contact our trade mark team today to discuss which option is more suitable for you and receive a quote.
The World Intellectual Property Organisation (WIPO) is the global forum fro intellectual property (IP) services, policy, information and cooperation. WIPO provides the possibility to apply for international patent and trade mark rights and the search engines to access international patents and trademarks.
You can also find overseas patents and trademarks by searching the national and regional databases, and it’s recommended to check both for the countries you’re interested in before applying for IP rights.
If you’re interested in extending your IP rights overseas, we highly recommend having our team of experienced trade mark lawyers and attorneys conduct a clearance search prior to proceeding.
There are 45 classes that cover all goods and services, and each class can cover a wide range of goods or services. Classes 1-34 are for goods, classes 35-45 are for services.
It is crucial that you apply for the correct classes at the time of filing, because your trade mark registration will only protect your trade mark for the goods and services that you’ve identified on your application.
Are you interested in protecting your brand with trade mark rights, but unsure what classes you require?
At Progressive Legal, we make sure to get to know your business dealings to the core and provide tailored advice on which trade mark classes you need, to ensure proper trade mark protection moving forward.
The existence of national trade mark rights in the country of origin is a prerequisite for an international trade mark application using the Madrid System.
Once your Australian application is filed, you’ll need to make sure your international trademark application contains the same trade mark, owner details and scope of goods and services as your existing Australian application. The scope of your application cannot be changed once filed, so it’s very important to get all your details formulated correctly at the start of the process.
Instead, you can also opt to file separate trade mark applications in each country where you decide to pursue registration. When you choose this option, you’ll need to engage local representation in each country.
Our trade mark team has longstanding relationships with trusted agents in many countries. Together, we ensure a strong application is put forward to the local trade marks offices.
International trademarks filed using the Madrid System are subject to a fixed examination period of 12 or 18 months in each of the designated countries. If no objections are raised by a country’s trademarks office, your trademark will automatically proceed to registration after examination.
Unfortunately however, it is very common to receive objections during examination of your international trade mark application, particularly when an international trade mark application is prepared without legal assistance.
Once objections are received, additional costs apply and legal representation is still required in each country in which objections are received, leading to much higher costs and a big headache as most issues are harder to resolve after the application is filed.
Our trade mark team can also assist you with overseas trademark applications filed directly into any country using our network of trusted local agents, which is usually a quicker method of obtaining trade mark protection.
Interested in finding out which option is likely more suitable for you? Contact us today for a complimentary phone call with one of our trade mark experts.