28th July 2017 - Jaclyn-Mae Floro

It is important to understand the complexities of registering a trade mark in foreign countries as businesses expand their operations overseas and brands globalise. In this article, we highlight some key points that every business owner should keep in mind when applying for an international trade mark using the Madrid Protocol system.

Use the Madrid Protocol – Online Resources and E-Services

 Trade Mark applicants have the convenience of submitting one application to protect their business or brand in multiple countries overseas.

The Madrid System website and customized E-Services are available to help you search before filing, file an application, monitor your progress and manage your registration.

 By searching for other trade marks, you can check if similar marks already exist in your target markets. You can start with the Global Brand Database to access 28 plus million records from 35 national and international collections. You can do searches based on various fields including the mark, classes, and country of origin. There are various filters available to help you narrow down your results.

The Madrid Goods and Services Manager is available to assist you to compile and verify your list of goods and services.

There is also a Member Profiles Database which you can reference to obtain general information, the filing rules and procedures and designation rules and procedures so that you can compare trade mark rules and examination procedures in the IP Offices of the Madrid System members. You can simply select the members of interest to you and choose the type of information you want to see. For example, you can access the general contact information of a trade marks office, including all their contact details, who to contact for questions in relation to international registrations, the date of entry into force of the member country into the Madrid Union and any declarations and notifications made by the contracting party.

The fee calculator allows you to estimate the cost for international applications, subsequent designations and also renewals.

You can also monitor the progress of your international application throughout WIPO’s examination process. After the World Intellectual Property Organisation (WIPO) has registered your trade mark, you can find out when protection is granted or refused in your target markets through the Madrid Monitor.

You can use the Madrid Portfolio Manager to manage your trade marks by securing access, tracking status, and renewing your trade mark.

International trade mark applications using the Madrid Protocol must be based on an existing Australian trade mark. That means, both applications must be identical. The application for the Australian trade mark and the international application must be the same and both claims must cover the same goods and/or services.

Who can file an international trade mark application?

 The applicant must be either an Australian resident, an Australian national, a person or organization with business premises in Australia or owning a real industrial or commercial establishment in Australia.

How much does it cost and what are your payment options?

 The cost would depend on the following:

• which countries you want your trade mark to be protected in
• how many countries you want trade mark protection for
• how many classes you apply for your trade mark

The fees you pay for an international application include a basic fee, complementary fees for countries that have not nominated an individual fee, fees for each country that has nominated to receive individual fees, additional fees if your trade mark is to be displayed in colour and a supplementary fee if more than three classes are nominated.

At the time of filing your international application through WIPO Madrid e-Filing, the fees must be paid directly to the International Bureau in Swiss francs.

Search for similar trade marks

 Before making a trade mark application, you should search for any national trade marks in the Madrid Protocol member countries that might be the same or similar to yours as these may act as a barrier to your trade mark application.

WIPO provides search facilities that will help you identify same or similar trade marks:

• ROMARIN: contains information about international applications in the International Bureau and international registrations
• Global Brand Database: contains existing brand data from multiple national and international sources (e.g. trade marks, appellations of origin and official emblems)

File your application now

 If you intend to do business in any countries overseas, the best time to file your trade mark applications abroad is now. Do not delay. Whoever files first secures often secures the trade mark rights. While the costs of filing internationally may be high, the costs of a trade mark dispute as to the rightful owner of your trade mark can be even higher.

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au

 
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.