Navigating International Trade Mark Filings
How do I register my Trade Mark internationally?
To obtain trade mark protection overseas you can:
- file a trade mark application directly in each country where you wish to have trade mark protection; or
- file an International Madrid Protocol Application.
1. Filing directly into overseas countries
There is an international convention called the Paris Convention, which provides a period of 6 months from the filing date of a first application (basic application) to file overseas trade mark applications in each country where trade mark protection is sought. The foreign application will then be given the same priority date as that of the basic application (i.e. Australian application) and not the actual filing date in the foreign country.
2. Filing an International Madrid Protocol Application
A much more cost-effective method for seeking overseas trade mark protection, is to file a single international (Madrid Protocol) application that has the same effect as a separate filing in each of the Madrid Protocol member countries you choose to designate for trade mark protection. The international application is filed through the receiving office of the member country (eg. IP Australia), and establishes a filing date which is effective in each of the member countries.
The international application may also claim priority from an earlier filed application (i.e. Australian application) if filed within 6 months from the filing date of the earlier application.
A benefit of the international application is the ability to add other Madrid Protocol countries at a later date as you expand into other markets. Another benefit is that you only need to make a single request to make changes to or renew international registrations.
Once an international application is filed, the designated countries then check the international application in accordance with their own national legislation and notify the International Bureau of any objections. Once any objections are overcome, the designated country can advertise your international registration for opposition. When everything is in order, you will receive the same level of trade mark protection in your designated countries as your have in Australia.
Adept IP can assist you to develop and implement a foreign trade mark filing and protection strategy that best suits your commercial needs and budget.
Please contact us for more information.
The international application may also claim priority from an earlier filed application (i.e. Australian application) if filed within 6 months from the filing date of the earlier application.
A benefit of the international application is the ability to add other Madrid Protocol countries at a later date as you expand into other markets. Another benefit is that you only need to make a single request to make changes to or renew international registrations.
Once an international application is filed, the designated countries then check the international application in accordance with their own national legislation and notify the International Bureau of any objections. Once any objections are overcome, the designated country can advertise your international registration for opposition. When everything is in order, you will receive the same level of trade mark protection in your designated countries as your have in Australia.
Adept IP can assist you to develop and implement a foreign trade mark filing and protection strategy that best suits your commercial needs and budget.
Please contact us for more information.