You have registered your trade mark in Australia to protect your business and business is booming. Now you are looking at expanding overseas.
One of the most important questions clients ask when they want to expand overseas is – How do I protect my Trade Mark in a foreign country?
When you register your trade mark in Australia the Trade Marks Act 1995 (Cth) allows you the exclusive right to use, licence and protect your brand in Australia, but not beyond our borders.
To protect your trade mark overseas you will have to register your trade mark in the country you intend doing business in.
It is often easier and more cost effective to do this directly if you only intend doing business in one or two other countries.
However, if you intend operating in multiple different countries the better option would be to seek a single registration through the Madrid protocol.
What is the Madrid Protocol?
The Madrid Protocol is often also referred to as the Madrid System.
It provides for a central system to obtain multiple trade mark registrations in different countries.
It was commenced through the Madrid Agreement, concluded in 1891, and the Protocol relating to that Agreement which was concluded in 1989.
The Madrid Protocol provides a centrally administered system for obtaining multiple trademark registrations in countries who are signatories to the Protocol.
It should’t be distinguished from the European Union trademark system which creates a single unified registration across different countries within the European Union.
Under the Madrid Protocol a single international trade mark application is made along with one set of fees for all or a selection of countries that are members of the system.
Once the application is made each country has a discretion to grant the application.
Once granted the trade mark is protected in that country just as if the relevant authority in that country had granted and registered it.
Depending on the country they usually take about 12 to 18 months to determine if they will grant registration.
Why should I register my trade mark overseas?
- It builds trust and recognition in new countries and their markets, and attracts a global customer base
- Enables you to take action against any fake or counterfeit operators which try to imitate your product and brand
- Provides assurance to the countries and their markets that you are operating in, that you have a strong reputable brand and are willing to protect it
How can FC Lawyers help?
Our business and corporate team has over 30 years’ experience protecting our clients’ brands both here in Australia and overseas.
The team can assist you in making the right decision as to which pathway to follow.
If you would like to discuss your intellectual property and trade mark options, contact our team to see how we can assist you.
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