When protecting a trade mark in foreign countries, there are two options for Australian businesses to consider:
- You can file an application in each country of interest, via local attorneys (the ‘direct method’); or
- You can file an International Application designating the countries of interest (the ‘Madrid Protocol’ method).
What is an International Application
An International Application is an application filed under an international trade mark system called the Madrid Protocol. It is a single application, filed via the World Intellectual Property Office (WIPO), which can designate any country which is party to the Madrid Agreement.
Once an International Application is filed, WIPO conducts a formalities check, and if the formalities are in order, it grants an “International Registration”. However, an International Registration by itself provides no enforceable rights in any country.
The International Registration simply allows a trade mark to be filed in multiple countries through a single application (selected countries are called ‘designations’). However, the trade mark must still be examined, and can be protected or refused, according to the laws of each designated country.
The advantages of an International Application
There are a number of benefits to filing an International Application, including:
- Costs are significantly reduced if a trade mark is granted protection without the relevant IP Office raising any objections, or where there is no third-party opposition. This is because an applicant will not be required to engage a local representative;
- The renewal process is streamlined as you are only required to renew the International Application as a whole, rather than renewing for each individual country;
- New countries can be designated under an International Registration at any time. This means that countries can be added as they become of commercial interest.
The disadvantages of an International Application
There are also some disadvantages to be aware of when considering an International Application, including:
- An International Application must be based on an Australian application or registration and it will remain dependant on the Australian application or registration for a period of five years. This means that if the Australian application or registration fails within five years of the filing date of the International Registration, the International Registration will also fail. However, if this happens there is an option to convert the International Registration into a national trade mark application or registration in each of the designated countries to ensure that rights are not lost. However, this will incur more costs;
- An International Application can only designate countries which are party to the Madrid Protocol. The Madrid Protocol currently covers 122 countries including most major developed countries such as the USA, the European Community, New Zealand and Canada. A full list of countries can be accessed here https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf;
- There is generally less flexibility in making amendments to trade marks filed under the Madrid Protocol when compared to individual national or regional applications. This can cause problems when seeking to overcome objections.
Generally speaking, an International Application is the most cost-effective option if a business is seeking to protect its mark in two or more countries, notwithstanding some disadvantages as discussed above.
If you wish to discuss filing your trade mark in a foreign country, please do not hesitate to contact us.