Expert Advice

International applications where an international agent is required

B2B Editor1 September 2014

International applications where an international agent is required

We often meet with clients who are surprised to learn that their registered trade mark provides no protection in other countries.

Trade marks (like other forms of IP such as patents and designs) are registered on a per country basis.

If wishing to extend protection of your Australian trade mark rights to other countries, do you need to engage lawyers or trade mark attorneys in those specific countries? The answer, like the answer to many legal questions, is “it depends”.

International applications which we can file from Australia

Australia is a signatory to an international convention called the Madrid Protocol. A single International Application may be filed (from Australia) under the Madrid Protocol nominating any country that is also a signatory to that international instrument.

Such applications act as a bundle of applications filed in the designated countries and, if and to the extent accepted, International Registration is issued by the International Bureau at the World Intellectual Property Organisation (WIPO). International applications using the Madrid Protocol would be based on the Australian trade mark application(s) (the basic trade mark(s)).

If utilising the Madrid Protocol, any application assumes your Australian trade mark (i.e. the basic mark) proceeds to registration and remains registered for a period of 5 years. Failure to meet these requirements would result in applications under the Madrid Protocol being denied or removed.

Under a different international convention (the Paris Convention), if an international application is filed in a country which also a signatory to that convention within 6 months of the Australian filing date, the international application will benefit from the Australian filing date (ie it will be deemed as filed on the Australian trade mark filing date, and if it proceeds to registration, be registered from the Australian filing date).

Most countries are signatories to the Paris Convention, but only about half the countries in the world are signatories to the Madrid Protocol. The following are examples of countries that are signatories to the Madrid Protocol: the USA, the European Union (including the UK), China, Japan, New Zealand.

International applications where an International Agent is required

If wishing to file a trade mark application in a country that is not a signatory to the Madrid Protocol, then a local lawyer / trade mark attorney will usually need to be instructed. We have a network of international agents we can use to assist in such circumstances.

Avoiding infringement: pre-filing and pre-use searches

Finally, since your Australian trade mark does not provide rights in other jurisdictions, before using a trade mark in another country, it is prudent to first have searches conducted to ensure that such use won’t infringe the rights of other parties in those jurisdictions.

We can assist with all of your Australian and international trade mark requirements. Visit us