March 14, 2018 | Moira McKenzie

To obtain Trade Mark protection in countries outside Australia, you can either file a direct application to each country’s Patent and Trade Marks Office, or you can file an international application with IP Australia through the Madrid Protocol (where such countries are party to the Madrid Protocol). Trade Mark registration through the Madrid Protocol is generally less expensive and simpler than dealing directly with overseas Trade Mark Offices.

In order to file an international Trade Mark application through the Madrid Protocol, the Trade Mark must first be registered (or have an application pending) in Australia (called the ‘Basic’ mark). Until the Basic Mark is fully registered in Australia, there is still a risk that it may not reach registration (due to opposition or other reason), in which case the Madrid application will lapse. Once a Madrid Trade Mark application is filed with IP Australia, it is then forwarded to the International Bureau (IB) for examination. If any issues or conflicts are discovered by this point, IP Australia will send out a notification. If no issues are found, the IB will then record the Trade Mark on the International Register for Trade Marks. The IB will then advise the relevant overseas Patent and Trade Mark Offices of the registration of the Trade Mark.

The relevant overseas Patent and Trade Mark Offices will then cross-check the international register in accordance with their own Trade Mark legislation and notify the IB of any objections or refusal.  Once this process is complete and, provided that registration has not been refused, the relevant overseas Patent and Trade Mark Offices will give effect to the Trade Mark registration in that country. It can take up to 18 months for a Madrid Trade Mark Application to be finalised/registration to occur, however once a Madrid Trade Mark is registered (provided the Madrid Application is filed within 6 months from the Australian registration/application), it will be backdated to the registration date of the Australia application.

When applying for the Trade Mark in various countries, IP Australia will charge a fee for each application depending on how many countries and how many classes a trader wishes to register the Trade Mark in.  Some countries including Brazil, Hong Kong, Singapore and Canada do not fall under the Madrid Protocol, and accordingly the trader would need to engage an agent in those countries to file the applications directly.