AUSTRALIAN CLIENTS FILING OVERSEAS

 

If you are an Australian individual or a member of a company or organisation seeking to protect their Australian trade mark overseas, then the following information on how to register a trade mark internationally is for you.

 

There are two ways an IP owner may file an application to protect their trade mark overseas:

 

1. A single international application via the Madrid Protocol

2. National applications filed directly into each country of interest

 

The Madrid Protocol

Australia is party to an international treaty called the Madrid Protocol.  Filing international trade marks utilising the Madrid system, allows for the filing of trade mark applications in a number of countries in one application.  Our firm files the application directly, and it is only necessary to engage foreign Associates if an objection is raised in a particular country. In that case, we need to engage a foreign firm to enter as your representative in that country and prosecute the application on your behalf.

 

It is also possible to make subsequent designations under the Madrid Protocol, if you wish to add countries to the international registration at a later date.

This method of filing means that over the life of the application our firm will charge for the filing of the application and all steps taken in prosecuting the application to acceptance and registration in each country, whilst our Associates only charge if they are required to answer an objection.

 

For more information about the Madrid Protocol, click here.

 

National Applications

National applications are when we engage Associates to file an application on your behalf and prosecute the application to registration, in each individual country of interest. There may be some circumstances where this option may be more advisable than filing utilizing the Madrid Protocol.

 

The Paris Convention

The Paris Convention for the Protection of Industrial Property is an international agreement to which Australia is party. Under the terms of the Paris Convention, if you firstly file a trade mark application in Australia, you will have up to six months to file an application for the same trade mark, claiming the priority date of your Australian application, in one or more of the Convention countries.

 

The Paris Convention is useful in terms of filing strategy, as it assists you in deferring the timing of costs of overseas applications for up to six months, whilst still preserving your Australian priority date.

 

If you have any questions about how to register a trade mark internationally, please contact us on 07 3369 2226 or [email protected] for an initial free consultation.

 

Geraldine Rimmer

Contact Geraldine Rimmer, Senior Associate

Kellie Jukkola

Contact Kellie Jukkola, Associate

 

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