Your Australian trade mark registration only provides you with rights in Australia. If you are thinking of using a trade mark overseas, you should ensure that you obtain trade mark registrations in other countries of interest.
In the past, the only way to register trade marks overseas was to file an application directly with the Trade Marks Office in each country of interest. In 2001, Australia joined an international treaty called the "Madrid Protocol" and, since this time, it has been possible to file a single international application designating a number of different countries at the same time. The international application is filed directly with the Australian Trade Marks Office. Details of the application are then forwarded to the Trade Marks Offices in each of the designated countries so that the trade mark can be examined in accordance with the laws of each country.
It is only possible to designate member countries under an international application filed through the Madrid Protocol system. There are over 60 member countries including the United States, the European Community and China. The costs involved depend on the number of countries designated. For countries that are not members (eg Canada), a separate national application still needs to be filed.
One of the main advantages of filing an international application through the Madrid Protocol system is the cost savings. An international registration is also generally more cost-effective to manage as renewals and assignments can be arranged through a central agency.
If you would like more information in relation to registering trade marks overseas, please do not hesitate to contact us.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
