Brand Plans: Trade Mark Protection Overseas
1. Guide to trade mark protection internationally
Trade Mark Protection Overseas
Intellectual property rights are granted on a country by country basis.
So if you're looking to take your brand global, your Australian trade mark registration will only get you so far in terms of brand protection. You will need to register and protect your brand overseas.
There's a few different options to filing for trade mark protection overseas:
- Filing a Madrid Protocol application; or
- Individual applications in various countries.
2. Madrid Protocol application
What is a Madrid Protocol (MP) application?
A MP application allows brand owners to file for protection of their trade marks overseas in various countries through a single international application.
It can be an economical way to file for trade mark protection in several countries of interest overseas.
An MP application must be based on an existing Australian application or registration.
3. Benefits of a Madrid Protocol application
The Advantages
a) Convenience
Several countries can be selected and covered through a single MP application. Most of the major overseas countries are members of the Madrid Protocol system and can be covered under an MP application.
For example: the United States, European Union, UK, China, Japan.
b) Economical
One benefit of filing a MP application is we can handle all the heavy lifting with preparation and filing of the application. We won’t need to engage the services of any international Associates for the filing. This helps to keep costs to a minimum in the first instance.
We will need the services of a local Associate if there are issues with the application moving forward in each of the countries selected.
c) Renewals
Trade marks protected through the MP system are valid for 10 years and can be renewed every 10 years. The MP registration only needs to be renewed through the international office — which will renew the registration in each of the selected countries. This avoids the need to renew the mark in every selected country.
d) Centralised Management
Other updates such as changes of names, addresses or ownership can also be managed through the international office. There's no need to update these details in every selected country.
4. How much does it cost?
MP Application Costs
The costs associated with the preparation and filing of an MP application depend on a few variables:
— the countries selected;
— the number of classes covered;
— if the mark is a logo, whether it is filed in colour or black and white.
Please let us know which overseas countries are of interest to you, and we can provide a further guide to application costs.
5. Adding countries
Subsequent Designations
Another benefit of filing a MP application is you can add additional countries at a later stage — this is called a subsequent designation.
For example:
— The US and European Union might have been your initial markets of interest for brand protection when the MP application was filed.
— But now the business and brand is booming in Japan.
— We can select Japan as a subsequent designation to your existing MP filing.
— We do not need to file a new MP application or file an application directly into Japan (which will require the services and expense of a local associate).
Subsequent designations can be a cost effective option for extending your brand protection strategy overseas as your brand grows.
The costs for subsequent designations depend on the countries selected and the number of classes covered.
We can always provide a guide to costs for any subsequent designations.
6. Individual countries
Individual Applications Overseas
Not all countries are part of the Madrid Protocol system, for example Taiwan, Hong Kong.
For any countries outside of the MP system, we will need to file seperate applications directly into those countries with the help of a local Associate in that country.
We have a large network of experienced international associates who we work with regularly.
Please let us know which countries you're keen on seeking protection in and we can obtain cost estimates and advice from our Associates.
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