A trade mark registration is territorial — it only provides protection in the country where it is registered. An Australian trade mark gives you enforceable rights within Australia, but it does not prevent someone in the United States, Europe, or Asia from registering and using your brand name in their own market. To protect your brand internationally, you need to register your trade mark in each country where you want protection.
The Madrid Protocol
The most efficient way to register a trade mark internationally is through the Madrid Protocol, an international treaty administered by the World Intellectual Property Organization (WIPO). Australia is a member of the Madrid system, along with over 130 other countries and territories.
The Madrid Protocol allows you to file a single international application, through IP Australia, that designates multiple countries where you want trade mark protection. Instead of filing separate applications in each country through local attorneys, you can manage the process through one centralised application.
The Madrid Protocol allows you to file one application and seek trade mark protection in over 130 countries through a single, centralised process.
How the Madrid system works
The international registration process under the Madrid Protocol follows a structured sequence:
- Base application or registration: You must first have an Australian trade mark application or registration in place. This serves as the foundation for your international application, and the mark, owner, and goods or services must be consistent across both.
- Filing through IP Australia: Your international application is filed through IP Australia, which certifies it and forwards it to WIPO.
- WIPO examination: WIPO conducts a formalities check and, if everything is in order, records the mark on the International Register and publishes it in the WIPO Gazette of International Marks.
- Notification to designated countries: WIPO notifies the trade mark office in each country you have designated. Each country then examines the application according to its own local trade mark laws.
- Local examination: Each designated country has the right to refuse protection based on its own examination criteria. If no refusal is issued within the applicable time period (typically 12 to 18 months), protection is granted in that country.
The end result is that your trade mark receives protection in each designated country as if it had been registered directly in that country.
Advantages of the Madrid system
The Madrid Protocol offers several practical advantages over filing directly in each country:
- Cost efficiency: A single international application is generally less expensive than filing separate applications through local attorneys in each country.
- Centralised management: Changes to the registration — such as a change of name, address, or ownership — can be recorded through a single request to WIPO, which then applies across all designated countries.
- Simplified renewals: The international registration is renewed through a single renewal with WIPO every 10 years, rather than managing separate renewals in each country.
- Flexibility: You can add additional countries to your international registration at any time after the initial filing, allowing your protection to expand as your business grows.
The dependency period
One important feature of the Madrid system is the five-year dependency period. For the first five years, your international registration is linked to your Australian base application or registration. If the Australian base is refused, withdrawn, or cancelled during this period, the international registration may also be affected.
For the first five years, your international registration depends on the survival of your Australian base application. After five years, it stands independently.
After the five-year period expires, the international registration becomes independent of the Australian base and stands on its own in each designated country. This means that even if your Australian registration is later cancelled, your international rights in the designated countries remain unaffected.
The Paris Convention priority period
If you have recently filed an Australian trade mark application, the Paris Convention gives you a six-month priority period in which to file internationally while claiming the benefit of your original Australian filing date.
This is important because it means your international applications will be assessed as if they were filed on the same date as your Australian application. Any trade marks filed by third parties in those countries during the six-month window will not constitute prior rights against your application.
To take advantage of this priority right, you must file your international application within six months of your Australian filing date. Missing this deadline does not prevent you from filing internationally, but you will lose the benefit of the earlier priority date.
Choosing countries strategically
International trade mark registration involves costs in each designated country, so a strategic approach is important. When deciding where to register, consider:
- Current and planned markets: Where are you currently selling or planning to sell your products or services?
- Manufacturing locations: If your products are manufactured overseas, registering in those countries can prevent others from using your brand on competing goods produced locally.
- Key trading partners: Major markets such as the United States, European Union, United Kingdom, China, Japan, and Southeast Asia are common priorities for Australian businesses.
- Risk of misappropriation: Some jurisdictions have higher rates of trade mark squatting, where third parties register well-known foreign brands with the intention of blocking or extorting the original owner. Early registration in these markets is advisable.
Register early in markets where you plan to do business and in jurisdictions where trade mark squatting is a known risk.
Examination in each country
It is important to understand that the Madrid Protocol streamlines the filing process, but it does not bypass local examination. Each designated country examines the application according to its own laws. What is registrable in Australia may not be registrable in another country, and vice versa.
If a designated country raises an objection or refuses protection, that refusal only affects the registration in that particular country — it does not impact your protection in other designated countries. Local objections typically need to be addressed through a local attorney in the relevant country.
Ongoing management and renewal
Once granted, an international trade mark registration lasts for 10 years and can be renewed indefinitely. Renewal is handled centrally through WIPO, which simplifies the administrative burden of maintaining protection across multiple countries.
However, it is important to monitor each market for potential infringements, as enforcement remains a country-by-country matter. A trade mark registration gives you the right to take action, but you must be vigilant in protecting your rights.
Get expert guidance
International trade mark strategy requires careful planning. The right approach depends on your business model, target markets, budget, and commercial priorities. An experienced trade mark attorney can help you identify which countries to prioritise, navigate the Madrid system efficiently, and manage any objections that arise during local examination.
To understand the fundamentals of trade mark protection, see our guides on how to trade mark in Australia and why trade mark your brand.
If you are considering international trade mark protection, contact Patentec for a complimentary consultation. We can assess your international requirements and recommend a strategy tailored to your commercial objectives.