Australia: Trade marks: is your brand protected internationally?

Last Updated: 17 February 2014
Article by Karen Hayne and Emma Appleby

One of the common errors brand owners make when seeking protection of their trade marks is the failure to recognise that only seeking to protect their trade marks in Australia, means that their trade marks will not generally be protected in other countries.

Trade marks are territorial rights, which are protected through a registration or grant procedure. This means that trade mark rights can generally only be enforced in countries or Jurisdictions where protection has been applied for, granted, and remains in force.

This is a particularly important issue to be aware of if you are a trade mark owner who exports branded goods. It is also important for trade mark owners to consider whether it is likely in the future, that the business may expand overseas. This could occur in various ways, including exporting of branded goods; a partnership or licensing arrangement with an individual or company in a foreign country, or expansion of the business into an overseas region. Trade mark rights are not static and need to be reviewed and updated as your business grows and changes, including into overseas markets.

If trade mark rights are territorial, how do brand owners best seek protection in the countries or regions that are, or may in the future be, important to the business? One of the primary ways to seek protection in respect of your trade marks on an international level is through the Madrid Protocol (MP).

What is the Madrid Protocol?

The MP is a treaty providing for the international registration of trade marks. This treaty is administered by the International Bureau (IB) of the World Intellectual Property Organization in Geneva Switzerland. There are currently 91 contracting parties to the MP, with two of the most recent countries to join being New Zealand and India.1 The MP includes defined regions as well as individual countries, for example, the European Union (EU) is considered a separate member in addition to each of the EU countries, as the EU maintains a separate trade marks register to those of individual members of the MP. A list of the current contracting parties (Jurisdictions) is set out below.

Based on a local application(s) and/or registration(s) in a MP Jurisdiction, subject to meeting the eligibility requirements to utilise the MP, trade mark owners can make a single International Application in English and pay one set of fees to seek trade mark protection in both their primary and other Jurisdictions (which are members of the MP). This eliminates the need for trade mark owners to apply for, and maintain, individual national applications in each country of interest.

Additional Jurisdictions can also be added to the International Registration (IR) as the owner's business expands or further Jurisdictions of interest join the MP.

From an Australian perspective

Trade mark owners who have sufficient standing in Australia,2 and have an Australian trade mark application or registration, can apply for an IR designating any of the Jurisdictions which are contracting parties to the MP.
Applications for an IR are initially lodged with IP Australia (IPA) (with the requisite official fees) and the IR must be based on an existing Australian application or registration. The owner details of the IR must be the same as those set out in the Australian application or registration. In addition, the trade mark, and the goods/services must be identical to (or in the case of the goods and services a sub-set of), those included in the Australian trade mark application/registration being relied upon.

Once the IR is filed, it is possible to add further Jurisdictions to the IR (for the same mark and for the same goods/services only), at any time. This means that if your commercial interests expand into new countries which are MP Jurisdictions, then those new Jurisdictions can also be added as designations (i.e. applied for countries) to the current IR.

The IR Application, once filed, will undergo an initial preliminary check by IPA to ensure it meets all threshold requirements. It will then be forwarded by IP Australia to the IB for an irregularities review (for example classification issues) If there are no irregularities (or they are overcome), the IB will then forward the IR Application to the respective trade marks offices of the relevant Jurisdiction designations for examination purposes. In the event that any issue precluding registration is identified by any of the Examiners in respect of any Jurisdiction and an adverse report issues, this is reported to the trade mark Applicant so it can be considered and dealt with to try and overcome any issue to proceed the IR to registration.

If no adverse reports issue, (or they are overcome), the designated Jurisdictions will then give effect to the IR as if the IR Application was a national trade mark. In other words, the mark achieves registration in that Jurisdiction and is afforded full protection under the local law that would otherwise be afforded to a locally filed registration in that country (or region such as the EU).


Some advantages of filing an IR include that:

  • Utilising a centralised international trade mark registration system is generally a more cost effective way of seeking protection in a number of Jurisdictions. This is primarily due to the fact that local associates are not required to be involved in the filing or registration process (unless an adverse report issues).
  • Official fees are typically upfront, at the time of filing (other than certain countries that require payment of a secondary fee to enable registration, i.e. Japan).
  • The Applicant retains full control of the IR from Australia and only calls on the assistance of local associates when required (i.e. when an adverse report issues).
  • A single request (lodged via IPA), with the relevant fees, is all that is required to make changes to (such as recording a change of owner name/address), and renew the IR in relation to all designations.3 Accordingly, ongoing administration of the IR is simple and cost effective over the long term.


Some disadvantages of filing an IR include that:

  • Not all countries are parties to the MP. If protection is sought in a country which is not part of the MP, for example Canada is currently not covered by the MP, it will be necessary for a national application to be lodged with the assistance of a local associate.
  • The IR is dependent on the Australian basic application/registration for the first 5 years. This means that if the Australian application/registration upon which you base your IR does not proceed to registration, or is subsequently successfully opposed, removed or cancelled, the IR will also suffer the same fate (a process known as "central attack") and cease to exist. However, in the event of this occurring, there are provisions for the IR to be transformed to a national application in each of the designated Jurisdictions upon payment of the requisite fees. This process generally allows owners to retain the original priority date for those Jurisdictions (normally the filing date), which can be critical in terms of maintaining protection of a mark in important markets (particularly those countries that rely on concepts of "first-to-file" rather than "first-to-use" to determine trade mark rights). Beyond the initial 5 year period, the IR is no longer linked in this manner to the relevant Australian registration.

Is the MP right for you?

Businesses should review and consider where their businesses are headed in terms of overseas growth and use of their trade marks outside of Australia. If you use, or are considering using, your brand overseas, contact us to discuss whether the MP is a viable option for protecting your trade marks or the strategy that may best work for your business.

Also, if you already have an IR, now is also a good time to find out whether additional Jurisdictions of interest may have joined the MP, and whether a subsequent designation should be considered to expand your trade mark protection.

Countries currently party to the Madrid Protocol

Albania Antigua and Barbuda Armenia Australia Austria
Azerbaijan Bahrain Belarus Belgium Bhutan
Bosnia and Herzegovina Botswana Bulgaria China Colombia
Croatia Cuba Cyprus Czech Republic Democratic People's Republic of Korea
Denmark Egypt Estonia European Union (EU) Finland
France Georgia Germany Ghana Greece
Hungary Iceland India Iran (Islamic Republic of) Ireland
Israel Italy Japan Kazakhstan Kenya
Kyrgyzstan Latvia Lesotho Liberia Liechtenstein
Lithuania Luxembourg Madagascar Mexico Monaco
Mongolia Montenegro Morocco Mozambique Namibia
Netherlands New Zealand Norway Oman Philippines
Poland Portugal Republic of Korea Republic of Moldova Romania
Russian Federation Rwanda San Marino Sao Tome and Principe Serbia
Sierra Leone Singapore Slovakia Slovenia Spain
Sudan Swaziland Sweden Switzerland Syrian Arab Republic
Tajikistan The former Yugoslav Republic of Macedonia Tunisia* Turkey Turkmenistan
Ukraine United Kingdom United States of America Uzbekistan Viet Nam

*Effective from 16 October 2013


1Thailand is in the process of being a member of the Madrid Protocol.
2Is an Australian national , resides in Australia, or owns a real and effective industrial or commercial establishment in Australia.
3The initial term of protection once granted is 10 years. This can be renewed upon payment of the requisite fees.

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

Click to Login as an existing user or Register so you can print this article.

Karen Hayne
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”

Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions