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How to Get an International Trade Mark?

Even if you have registered a trade mark in your home country, this does not guarantee protection when you decide to expand your brand and market your products or services globally. Your trade marks may have protection in the geographical places where they are registered, but if you are trading overseas, you should consider whether your brand is unprotected in the global market. You may need to further expand your trade mark portfolio to enhance protection, depending on where your target market is on an international scale.

Here are a few things you should keep in mind when expanding your trade mark portfolio.

Asking Some Questions

How important is it to my business to protect my brand name in the overseas market against competitors?

Evaluate your products and services and collect all the information you have that relate to your trade mark portfolio and trade mark ownership. Ask whether you own the intellectual property in trade marks and what steps you have taken to register for trade mark protection. Are there any restrictions on your ability to freely use the trade marks and file for protection overseas?

It is a good idea to create an IP Asset Register where you describe your trade marks, the date of creation, whether there are any potential risks and what past actions have been taken and next actions needed to manage and protect your trade marks. Do you need to take steps to protect your trade mark overseas because you are currently providing a supply there or are you planning to offer a supply of protects or services there in the future? After you register your trade marks locally and overseas, it will be much easier to enforce your rights against those that seek to infringe them.

Assessing the Target Market

Where are you aiming to sell your products? The best way to secure your intellectual property is to extend your trade mark registration to countries where you are going to sell your products or services. This creates a lower likelihood of your product being imitated or copied by foreign companies and business owners.

You should do a background check or “search” on the existing trade marks in the country you plan to register your trade mark in. This will help you establish if there are existing businesses that have conflicting or similar trade marks to yours which may act as a barrier to registration of your own trade marks. Remember that overseas jurisdictions may employ different trade mark systems, for example, a “first to file” trade mark system grants rights to the first person who filed a trade mark in that country, while a “first to use” trade mark system grants trade mark rights to those who first used a trade mark in the country.

Filing your Trade Marks Overseas

The primary advantage of using the Madrid Protocol System to file overseas is that it allows a trade mark owner to obtain trade mark protection in any or all member states by filing one application with one set of fees (application and registration fees are processed in one payment). The Madrid System has the following advantages:

  • A single international application in one language (English, Spanish or French) can save costs and streamline administration (a single request is required to make changes or renew international applications).
  • It is filed through the Trade Marks Office of the home country.
  • Protection can be sought in one, some or all of the other member countries.
  • When an international registration is granted protection in the target country, it has the same protection as a national registration in that country.
  • Designation whereby protection can be extended to new jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade mark owner may choose.
  • No requirement for legalisation or translation of an application.
  • No need to hire local associates unless there is an objection or refusal in a particular designated country or countries.
  • Priority date same as originating basic application filing date provided claimed within 6 months thereof.
  • Valid for a period of 10 years commencing from the application filing date and can be renewed for successive ten-year terms by paying a single renewal fee to WIPO.
  • Assignments of the trademark rights can be recorded for all or some of the countries covered at WIPO instead of on a country-by-country basis.

    Take Away Points

    • When supplying your products or services to the global market, expand your trade mark portfolio globally to ensure protection on an international scale.
    • Evaluate and assess the trade mark system and trade marks in your target market overseas to manage the likelihood of infringement on your trade marks
    • Use the Madrid Protocol System to register your trade marks in different countries in “one go”.
    • Seek the assistance of a trade mark lawyer to help you with your international trade mark applications, especially in those countries which are not members of the Madrid Protocol System.

     

    Jaclyn-Mae Floro, BCompSc

    Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.
    Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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