We often meet with clients who are surprised to learn that their registered Australian trade marks do not extend to registered rights in other countries. Like other forms of IP, trade marks 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 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).
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, 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:
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 you can protect your brand in those jurisdictions and that use before registration will not infringe the rights of other parties.
Other international considerations
There are a number of other considerations when filing trade marks in other jurisdictions. These include:
- Consequences of “first to file” v “first to use” jurisdictional differences
- Whether to also file translations and/or transliterations
- Controlling use of your IP through suitable agreements
The focus of Moulis Legal can be summarised as follows: Commercial + International
Our IP & Commercialisation team can assist with securing and commercialising IP rights internationally.