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Do I need an overseas trademark?

There is no such thing as an “international” registered trademark. Trademarks are registered on a jurisdiction by jurisdiction basis.

However, there are ways in which you can quickly and cost-effectively file in multiple jurisdictions at the same time, which we discuss further below.

If you are selling or promoting goods or services in another country (or indirectly, by distributors or agents), then it is advisable to apply to register a trademark in that overseas country. Otherwise, you risk losing your rights to your brand in that country or potentially infringing another’s registered trademark.

Why should I register my trademark overseas?

The registration of a trademark in Australia is conducted by IP Australia, however, registration in Australia affords no intellectual property protection outside of Australia. For example, if a trademark is registered in Australia, a business owner in the United States could register the same trademark in the United States. The United States is no doubt a fair distance from Australia. However, the importance of online business and the increasing globalisation of business have rendered this physical separation insignificant.

In terms of trademark law, a country generally falls into one of two categories:

  • a “first to use” jurisdiction; and
  • a “first to file” jurisdiction.

It is particularly important to promptly apply to register your trademark if you are selling (or advertising) goods or services in a “first to file” jurisdiction, otherwise someone else could file a trademark for your brand name, and then stop you from trading your goods or services under that brand even if you have been using that brand before them. This can be an expensive process that could be easily avoided if you filed a trademark application promptly in that “first to file” jurisdiction.

A “first to use” jurisdiction determines ownership of a trademark by the first person to continuously use a trademark in that jurisdiction in respect of certain goods or services. This can be an especially tricky area and advice should be sought for clarification. In 2011, an English company was found to have infringed upon an Australian company’s trademark rights even though they were located in England. This was because of how they used their trademark online (International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd [2011] FCA 339). 

How can I register my trademark overseas?

There are two ways a business owner can register a trademark overseas:

  1. apply directly for registration in the country that the business owner wishes their trademark to have effect; and
  2. apply pursuant to the Madrid Protocol.

Application for registration in specific countries (the first option) is effective and entities/individuals in that country will not be able to use that trademark. This does not have to be done through IP Australia; rather the specific systems of the designated country will be used. Further, the trademark will be subject to the domestic trademark laws of the designated country. Trademark professionals such as HopgoodGanim can assist in this process.

Alternatively, the Madrid Protocol offers business owners the option of applying to register a trademark in multiple countries through a single application process. The Madrid Protocol effectively streamlines the application and registration process. The countries in which the business owner wishes to register their trademark must be party to the Madrid Protocol. The protection of the trademark in the designated countries is the same as if the trademark had been registered directly within those countries. The registration is effective for 10 years with the possibility of renewal.

An application through the Madrid Protocol must be based on a registration owned by the business owner in Australia. This application can be done in English and must be filed through IP Australia. Making an application under the Madrid Protocol has many advantages, including saving money and time - but it is a complex process that should be undertaken by an IP lawyer or a trademark attorney.

 

Request a quote

To discuss your quote or take the next step in your trademark journey, call us today +61 7 3024 0000 or make contact via email - ip@hopgoodganim.com.au

 

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Please provide us with as much information as possible about the trademark you wish to register. This will help us to provide you with a quote as quickly as possible.