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
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
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
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
IP is the legal property in the innovation in your business and it is that which drives your revenue and profit growth.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).