An Australian trade mark registration is only effective in Australia. Having a trade mark registered in Australia will not protect your brand overseas unless that country recognises your prior use and reputation. Some countries do not recognise use of a trade mark and it is the first to file a trade mark application that secures rights to the trade mark.

If you want to protect your trade mark you have to file a trade mark application in that country of interest. Each country has its own laws regarding trade mark registration. They also each have their own examination standards so while a trade mark may be registered here in Australia does not mean that the mark will be registrable as a trade mark in the other country.

There are three ways to protect your trade mark overseas:

1. You can file a separate National trade mark application in each country of interest. You would need the assistance of a local Trade Mark Attorney firm for each country or have your application co-ordinated in each country from an Australian Trade Mark Attorney Firm.
2. You can protect your trade mark in the whole of the European Union with one trade mark application called a Community Trade Mark Application ('CTM'); or
3. By filing an International Trade Mark Application to register your trade mark designating one or more members of the Madrid Protocol. This is where you file one application (based on your Australian trade mark application or registration) designating the countries of interest (as long as those countries of interest have signed up as Madrid Protocol countries). There are currently 79 member countries.

What are the benefits of an International Trade Mark Application?

• You only have one single International Trade Mark Application and not several applications in play with numerous administrative hassles. One single application also saves on overseas Agents Fees for filing the national application. But each designated country has official fees to pay.
• Because only one application is filed you only have to pay the official fees per country and you can pay in Australian dollars.
• The rights granted in each designated country provide the same rights as those granted to owners of National trade mark registrations.
• The International Trade Mark Registration lasts for ten years from the date of filing the International Trade Mark Application. Like Australian trade mark registrations your protection can be maintained indefinitely subject to the payment of renewal fees. Renewal of the International Registration will have the effect of maintaining protection in each designated country.
• Additional countries may be added later.
• The International Application must be based on an Australian trade mark application or registration (called the Basic application/registration).
• Once the International Trade Mark Application is filed, each designated country will examine the application separately according to their laws and standards.
• An International Application in a designated country may also be opposed.
• If objections are raised to the International Application by a designated country then it is likely that it will be necessary to appoint a local Trade Mark Attorney to respond to the Trade Mark Office or act on your behalf to settle any opposition to the application.

Are there any disadvantages of filing an International Application?

The one major disadvantage is that the International Registration is dependent on the continuing validity of the Australian Basic Registration. If for some reason the Australian application or registration is rejected or successfully opposed then the International Application or Registration will fail.

There is a procedure available whereby if the Basic Application or Registration is withdrawn for any reason then the International Tared Mark Application maybe 'converted' to a National Application or Registration.

We recommend that prior to filing an International Trade Mark Application we conduct comprehensive searches to determine if the trade mark is available for your use and registration in the designated country of interest.