Trademark a Name Internationally

How to trademark your name internationally

Author: Ian Aldridge, Progressive Legal

This is a step-by-step guideline to register a trademark for a personal or brand name internationally, to have the worldwide security of your intellectual property rights, and the main benefits of the trade mark registration abroad. Knowing the different routes is a must if your company is going to new markets or wants to stop others from using your brand in different countries.

International trade mark protection can be secured in two main ways:

1. By filing a separate trade mark application in each country you want to be protected and thus have the freedom to select the particular national systems; or
2. By filing an international trade mark application under the Madrid Protocol through which you can indicate several countries, and hence, overseas registrations can be facilitated by a single application.

What is an international trademark?

There is no such thing as a single global trade mark registration. A trade mark registration in one country does not automatically give the trade mark owner the rights in another one, and the protection has to be secured separately in each jurisdiction where the business is going to operate.

Let us take the example of Australia, where if you registered a trade mark and that registration will not be able to protect your brand in the United States, Europe, or any other market abroad.

In case you are taking your business to the international market or intending to offer products or services in other countries, then you will be required to file a trade mark registration in each country or employ an international filing system like the Madrid Protocol to make the process less complicated.

How to trademark your brand internationally

The Madrid System is a way for trade mark owners to file a single trade mark application and have it recognised in multiple countries. Hence, they can save a lot of time and money from the process of seeking trade mark overseas and also by the simple way of keeping their portfolio updated.

The extent of protection granted through the Madrid System may still be different from one country to another. Since each designated country examines the application according to its own laws, it is necessary to find out the requirements of each jurisdiction before filing.

Moreover, you may decide to file separate national trade mark applications in each of the countries where you seek trade mark protection. This choice may be better for some businesses, but you need local trade mark representatives in each country where you apply.

Our trade mark team works with the best international agents who are always ready to help with the correct preparation of your application and submission to the suitable trade mark offices with sufficient supporting material.

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