International Trade Marks

• International Trade Marks

  Almost all overseas countries have trade mark laws which allow registration of trade marks. Before using a trade mark in another country, it is recommended that a search be conducted to ascertain whether the mark is, in fact, available for use and registration in that country. The prospective trade mark should also be assessed for consumer acceptability in a particular country or market. That is, the proprietor should ensure that the trade mark does not have an unfavourable meaning or does not translate derogatively or descriptively in the particular country.

  Registration of a trade mark is strongly recommended in any country in which active trading is proposed, for the following reasons;

  • In overseas countries, it is generally more difficult to rely upon common law rights to protect an unregistered trade mark.
  • In many countries, there is a “first to file” rule whereby the first person to file a trade mark application is entitled to registration notwithstanding the earlier use of the same trade mark by another person.
  • Registration provides control over the use of the trade mark by a licensee or distributor in the particular country.
    Trade marks are usually registered on a country-by-country basis, i.e. a separate application is filed in each country of interest. However, in some cases, it is possible to cover multiple countries with a single registration.

• Madrid Protocol

  The Madrid Protocol allows an applicant to register trade marks in most overseas countries including the United States of America en China in a cost effective way. A Madrid Protocol application is based on an Australian trade mark application/registration.
  A single application is lodged with the International Bureau of the World Intellectual Property Organisation (WIPO). The trade mark application is then forwarded to every designated country where it is examined, accepted if no objection is raised, advertised and registered. There is no need for costly translations into the official language of every designated country as the application can be lodged in English.
  If objections are raised, there will be an opportunity to make submissions to overcome the objections. Renewal fees are payable every ten years.

• Community Trade Marks

  Most European countries can be covered by a single Community trade mark application. The application will be examined by the Community Trade Marks Office, accepted if no objections/oppositions are raised and registered for a period of 10 years. Renewal fees are payable every 10 years.

  Contact a trade marks attorney about your international trade mark registration

• Please click on the links below for further information

  International Trade Marks

  Registering a Trade Mark

  Selecting a Trade Mark

  Trade Mark Searches