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Obtaining Trademark Protection Overseas




Expanding your business to operate overseas is an exciting prospect! Before you get too carried away though, it’s worth talking to a trademark attorney Australia for advice on how to protect your intellectual property. Most countries have their own laws surrounding intellectual property. That means it’s possible to protect your unique ideas, but navigating international systems alone can be a challenge. In this article we’ll be addressing international trademarks and what you need to do to protect your branding in overseas markets.

What Is a Trademark?

Trademarks are a type of brand protection that businesses use to distinguish their products from those of competitors. For that reason, trademarks often hold huge amounts of inherent value, and having your trademarks copied can do serious damage to your business’ reputation. While trademarks often protect logos, they’re not limited to that use. An Australian trademark could also be:

  • - Words and phrases

  • - Letters or numbers

  • - Logos

  • - Pictures

  • - Packaging aspects

  • - Scents

  • - Shapes

  • - A combination of the above

Most countries provide laws that protect trademarks from being copied or used without permission. This ensures businesses always have control over their intellectual property.

Do I Need An International Trademark?

There’s no such thing as an “international trademark.” However, since most countries supply their own system for obtaining a trademark, it’s possible to obtain trademarks in international jurisdictions. If your business operates overseas, or if it sells its goods and services overseas (including through resellers), you need to obtain international trademarks.

International trademark legislation usually works on a “first to use” or a “first to register” basis. Both of these systems create a problem for brands that are operating internationally without registering their trademarks. In the case of “first to use” countries, the first company to consistently use a trademark has the right to continue using it. This means that if your trademark infringes upon an existing trademark in that jurisdiction, you can be liable for any damages caused. In the case of “first to register” countries, the first company to file an application has the right to use the trademark. If you’re not protected, another person could make an application for your trademark in that country and prevent you from registering it.

Registering Trademarks Overseas

You need to apply for a trademark in every country or jurisdiction where your goods and services are offered. You can use one of two methods to do obtain protection:

  1. You can apply directly to the trademarks office in each jurisdiction where you’re seeking protection. This can be time consuming and may require professional help. It’s the most affordable option if you’re only seeking protection in a few countries.

  2. You can apply through the Madrid System to obtain protection in any of the 128 member countries. Using the Madrid System is very cost and time effective if you’re seeking protection in lots of countries.

Whichever option you choose, it’s usually smart to engage the help of a trademark attorney Australia wide. Since each country has its own laws and systems surrounding trademarks, you need to ensure that your application is properly documented in every location. A professional attorney will be able to perform local trademark searches and prepare applications that have the highest chance of success.

Applying for Trademarks Through the Madrid System

If you’re going to be operating in lots of countries, the best way to obtain trademark protection is to use the Madrid System. Administered by the World Intellectual Property Organization (WIPO), the Madrid System has 128 member countries, and it allows you to apply for protection in any (or all) of them simultaneously. This system is especially cost and time efficient if you need protection in many jurisdictions.

To file a Madrid System application from Australia, you need to have a current Australian trademark or trademark application. The application you make through the Madrid System must match your Australian registration. You can’t change the details of the trademark or file for additional areas of protection. Otherwise, to file a Madrid System application from Australia, the only other requirements are that you must be:

  • - An Australian national or resident

  • - The owner of industrial or commercial real estate in Australia

  • - A person or entity with a business address in Australia

The total cost of applying for protection through the Madrid System changes depending on how many countries you’re seeking protection in. More countries cost extra, but the total expense is far less than preparing individual applications in each jurisdiction.

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