For Australian business that plan to go global, the most important international trade mark decisions take place in Australia first. As your international trade marks will be based on your Australian ones, your level of protection overseas depends on how strong your trade mark is at home. By consulting a lawyer about your trade mark early on, you can save yourself from expensive mistakes in the future. In this article, we cover
How do you register an international trade mark from Australia?
There are two main routes. The first is filing separate national applications, country by country, usually through local trade mark attorneys or agents in each place. While it works everywhere, it does amount to more work and more money. Each country you register your trade mark in will have separate applications, advisers, and renewal dates, so everything geets harder to keep track of as the list grows.
The second is the Madrid System, run by the World Intellectual Property Organization (WIPO). You file a single international application through IP Australia, based on your Australian trade mark, and designate the member countries you want. You can find the list of countries covered by the Madrid System here. Filing through the Madrid System centralises your application, renewals and changes of details, and you can add further countries later as your business grows.
For most businesses targeting several countries, the Madrid System is the simpler and more cost-effective route, which is why it is usually the starting point. However, some countries sit outside the system, or specific scenarios call for a national filing, so the two routes often end up combined.
Why is your Australian mark so important?
An international application under the Madrid System must be based on your Australian trade mark (your basic application or registration). This means your international application must have:
- The same owner as your basic registration;
- An identical mark to your basic registration; and
- Applicable goods and services that are the same as, or narrower than, your basic registration.
What are the consequences of this? First, your international trade mark cannot expand past your basic registration. If your international business plans call for more, or different protection than your domestic plans, your international application cannot stretch to cover them. It’s best to trade mark strategically with your international plans in mind, otherwise you’ll have to spend more money on several extra applications to fill the gaps. Our trade mark lawyers can tailor your applications take your full plans into account.
Why not decide on your international trade mark later?
While it’s possible to leave your international registration for when your business is ready to expand, it’s better to register it at the same time as, or shortly after, your basic application.
This is because of your trade mark’s priority date, which lets you claim priority over any similar applications that came after your priority date, but before your trade mark was accepted and registered. Usually the priority date is the date you filed to register your trade mark in Australia.
For international registrations in most countries, the Paris Convention allows your priority date to be backdated to match your Australian filing date, but only if you file your international registration within six months of your Australian filing date. It can seem like a long window, but only if you were prepared to register your international mark right away. It’s possible that you want to establish your business and trade mark in Australia first, and leave your international trade mark for later, when your business was ready to expand. Maybe you weren’t thinking about international expansion at all when you first registered your trade mark. However, when you finally decide that your business is ready to expand, it’s likely been years since your Australian filing date, way past that six month window.
This matters more than it sounds, because there might be businesses overseas that have similar marks to you, or there may be trade mark squatters overseas who anticipate that businesses will expand into their country. Some trade mark squatters can hold your trade mark ransom, others will use your trade mark to pass off their products as coming from your brand. If you file internationally past the six month date, there’s no priority that you can claim over these parties. This is especially tricky if you’re seeking to register any markets that run on a first to file basis. This is where the brand belongs to whoever registers it first, not whoever used it first.
Even if you’re not thinking of expanding internationally, trade mark squatters can still target your brand if you manufacture overseas, which we covered in our article on protecting your products made in China.
What happens if your trade mark is narrowed or cancelled?
As your international trade mark is based on your basic registration, it will also reflect any changes to your basic registration within five years of your Australian filing date. If the Australian mark is cancelled or narrowed, the international registration is cancelled to the same extent. This known as central attack. Central attack also applies where someone starts an action to cancel or narrow your trade mark within the five year period, even if the action concludes after the period expires.
If you want to retain the full breadth of your trade mark overseas, you can submit a transformation request. Within three months of WIPO cancelling or narrowing your trade mark, you can request to convert the international registration into separate national applications. The two main drawbacks is that:
- You now have to bear the associated costs and administrative tasks of national application
- Your trade mark is no longer under the Madrid System, so the Paris Convention no longer applies. Your priority date becomes the date you filed your international application, rather than when you filed your Australian application.
This is why the quality of your Australian mark matters. A weak Australian trade mark, like the descriptive names we covered in our distinctiveness article, can take the international registration down with it.
What next?
Before you file, here are some steps that you should take to make the registration process as smooth as possible.
- Decide what your export plan will be. Within the next three years, what are the goods and/or services that you want your business to provide? This can inform what classes you want your basic application to cover, because neither your basic nor international application can expand to cover new classes of goods and services. Thinking ahead can save you money from filing more applications later.
- Decide who the owner will be. The details of your basic and international application must match, including who the owner of the trade mark is. This might be you as a natural person, or your company, who would be a separate legal entity. This is a detail that might be overlooked if you incorporate another company for an overseas branch.
- Decide who your key markets are. Even with the Madrid System, there’s no single ‘worldwide’ trade mark registration. You still have to pick and choose which countries you want to submit an application to. Choose which markets you’re realistically going to expand into for the next few years and when expansion would actually happen. If certain overseas markets are essential to your business, aim to file in those markets within the six month priority window.
- Register early where you manufacture. If you manufacture overseas, you should aim to register in those countries first to get ahead of squatters.
- Have a backup plan. Your trade mark cannot be secured in a key market, would you rebrand for just that country? Another avenue is that you register the rest of your trade marks through the Madrid System, but make a national application for that specific market with an amended trade mark.
How The Legal Shop can help
Our trade mark lawyers can walk you through developing a strong trade mark, and set up the Australian filing with your expansion plan in mind. To get started on protecting your brand, book a free consultation for a fixed fee quote.
