How do I protect my trade mark internationally?

Registering your trade mark in Australia is a crucial first step to protecting your brand. However, many businesses now have global reach and operate internationally due to the internet. While this allows for an extensive customer or client base, it also opens retailers up to many more potential infringements of their intellectual property. Accordingly, it is important to consider how your brand and trade marks are protected overseas.  This article outlines the basics of international trade mark registration to help safeguard your business worldwide.

 

What protection does an Australian trade mark give me?

Trade marks protect your intellectual property rights in an identifying aspect of your business. This may include a logo, colour, sound, scent, picture or phrase. Businesses must register their trade marks with IP Australia to gain exclusive rights in Australia to use, sell and licence whatever they have marked. Once registered, an Australian trade mark is valid for ten (10) years, and you can apply to renew it before expiration.

 

Why do I need an international trade mark?

Australian trade marks do not stop overseas competitors from registering similar or even identical trade marks in another country. Accordingly, it is a good idea to consider overseas trade mark registration, especially if your business operates online or sells goods or services internationally. Filing for international registration of your trade mark can also be an important initial step to building global brand recognition.

 

How do I register an international trade mark?

International trade marks can either be registered:

  • directly in each of the relevant countries; or
  • though the Madrid System, administered by the World Intellectual Property Organisation (WIPO).

 

Direct trade mark application

If you are only looking to register your trade mark in one or two countries other than Australia, a direct application may be your best option. However, it is important to consider that each country has different requirements for filing a trade mark, and additional costs or documentation may be needed. Engaging a legal professional to help you lodge a direct application can streamline the international registration process and take the guesswork out of lodging an application.

 

Using the Madrid System

If you are looking to register your trade mark in more than two international countries, it may be easier to file an application using the Madrid System. This allows you to file one application for trade mark registration in multiple countries. Importantly, to apply through the Madrid System, you must already have a registered Australian trade mark or pending application for an Australian trade mark.

 

Key takeaways

  • Trade marks protect your intellectual property rights in an identifying aspect of your business.
  • Businesses operating internationally should consider registering their trade mark overseas to protect their intellectual property worldwide.
  • International trade marks can be registered directly with countries, or using the Madrid System.
  • Businesses should have a registered Australian trade mark or a pending Australian trade mark application first before applying for an international trade mark.

 

Gladwin Legal are experts in intellectual property and trade mark law. We can help you lodge and protect your trade mark in Australia and internationally. If you would like to speak to our award-winning trade mark lawyers, please contact us at or 1300 033 934.