Trademark a Name Internationally

How to trademark your name internationally

Author: Ian Aldridge, Progressive Legal

On this page we discuss how you can trademark your brand or name internationally, how to protect your brand internationally, and the benefits of trademarking your brand internationally.

There are two ways to do this:

1. You can either file a separate trade mark application in each country where you decide to pursue registration, or
2. File an international trade mark application under the Madrid Protocol and designate the countries you want your trademark to be registered in.

What is an international trademark?

There is no such thing as a worldwide trade mark (or global trademark). We as a world would have run out of names a long time ago if that was the case.

If you have registered a trade mark in Australia, you cannot expect it to be enforceable in the US, for example.

If you are (considering) expanding your business to other countries, you need to register the trade mark in each country.

How to trademark your brand internationally

The Madrid System allows trademark owners to apply for international trademark rights in multiple countries at once with only one trade mark application, thus minimising the effort of applying for international trademarks and allowing for easier worldwide trade mark management.

However, the level of protection through the Madrid System varies between countries and research should be done before applying for international trademark rights.

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 trademark team has long standing relationships with trusted agents in many countries. Together, we ensure a strong application is put forward to the local trade marks offices.

What to consider when trademarking your brand internationally

Here are some important points to consider when trademarking your name internationally:

• If you wish to establish business elsewhere in the world or are already trading overseas, you should consider filing an international application to protect your brand from infringement.
• Having international brand protection is particularly valuable if you are making significant investments into your brand awareness overseas and will help your overseas customers continue to identify the products and services you offer with your brand.
• In some cases, for example when trading on Amazon, it’s essential to have trade mark protection overseas before you can start selling into an overseas market.
• It’s also important to remember that you should consider protecting your trademark in countries in which you manufacture, to ensure protection and enforceability of your trademark rights in that manufacturing country too.

International trademark infringement disputes can be difficult to pursue without registered trade mark rights, and is much easier when you have registered trademarks in those countries.

What are the benefits of trademarking your brand internationally?

• International registration will protect your distinctive brand features in any overseas markets you’re trading in and/or focusing your marketing and advertising towards.
• International registration has the additional benefit of ensuring that you do not infringe any existing rights within overseas countries and aims to proactively avoid future disputes.
• You can act if any unauthorised use happens in those countries you’ve included in your trademark protection.
• Trademarking your brand internationally reduces the likelihood of trade mark infringement occurring in those countries.

Are trademarks protected internationally?

There is no legal viability of a “global trade mark”. Trademark rights are subject to local laws and regulations and are nationally binding, meaning an Australian registered trademark has no protective effect for countries other than Australia.

However, you can apply for international trademark rights at any time, either in multiple countries at the same time using the Madrid System, or on a per-country basis using local agents.

If you’re interested in extending your trade mark rights overseas, we highly recommend having our team of experienced trademark lawyers and attorneys conduct a clearance search prior to proceeding with international trademark applications using either method above.

Need help to trademark a name internationally?

Please get in touch with us today via phone or the contact form on this page.

1800 820 083