Should I register my trade mark overseas?

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“Let’s get ready to rumble!” is a phrase recognised around the world. 🥊🎙️

Famed wrestling and boxing announcer Michael Buffer must have known his catchphrase would take off when he started using it in the ‘80s. Since having it trade marked in 1992 around the world, he has reportedly made more than $400 million by licensing one of the most famous phrases to be used in movies, commercials, video games, you name it.

Protecting your trade mark and a business’s intellectual property is something that should be at the forefront of any business, but how far should you go to protect it globally?

As we all know a trade mark is used to give your business a unique presence in the marketplace and distinguish it from those of another business.

In Australia, trade marks are regulated through IP Australia. If your trade mark is registered in Australia, you must be aware that it will only provide you with protection in Australia.

In our modern world businesses can sell and promote their products and services now more easily than ever on a global basis.

So, should I protect my trade mark overseas?

It is important to note that most countries like Australia assume that if you have filed your trade mark in that country you intend to use it in that country. It does not imply it will be protected in another country.

If you have an Australian registered trade mark you have two options to protect it overseas by either:

  • Making an application directly to that country and you will have to comply with all their individual rules and regulations; or
  • Through an application filed through the World Intellectual Property Organization (WIPO).

Needles to say it can be a long and arduous process to register each trade mark in each individual country.

WIPO administers what is referred to as the Madrid Protocol. It is a very cost effective solution for a business to register their trade mark in 122 countries worldwide. See the list of members here.

This enables your business to make one application and in the future, you can make changes or renew registrations.

The application to WIPO must be made through IP Australia and their requirements are:

  • you must have an application and/or a registration in Australia on which to base your application
  • you must meet entitlement requirements within Australia
  • the mark on the international application must be identical to that contained on the Australian application/registration
  • the goods and services in your international application must be covered by the claims in the Australian application/registration
  • the applicant on the international application must also be the applicant on the Australian application/registration

The costs of registering an international trade mark will vary depending on such things as the classes of good and services you require and the number of countries you wish to register in.

Once registered it lasts for 10 year and can be renewed upon payment of the relevant fee.

At FC Lawyers have over 25 years’ experience in intellectual property law with a very strong focus on protecting your trade mark, both within Australia and globally.

Contact our team today for an obligation free assessment.

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