International Trade Mark Protection

Expanding your brand into overseas markets requires careful trade mark planning. A trade mark registration in Australia does not automatically protect your brand internationally. Separate protection must be obtained in the countries or regions where you intend to trade.

Australian Patent & Trademark Services (APTS) assists Australian businesses to develop and coordinate international trade mark strategies, working with experienced overseas associates to help secure and manage trade mark rights in relevant markets.

Protecting Your Brand in Overseas Markets

International trade mark protection is not simply a matter of extending an Australian registration overseas. Each country has its own trade mark legislation, examination procedures, classification requirements and potential conflicts with earlier rights.

The appropriate strategy will depend on your business structure, the markets in which you intend to operate, the goods and services you provide, and your future commercial plans.

Our International Trade Mark Services

APTS provides strategic advice and coordinates overseas trade mark services, including:

International trade mark searches and preliminary risk assessment.
Advice on appropriate countries, classes and filing strategies.
International applications through the Madrid Protocol where suitable.
Direct national applications through overseas trade mark associates.
Coordination of examination reports, objections and oppositions.
Monitoring international registration and renewal deadlines.
Ongoing international trade mark portfolio management.

The Madrid Protocol – International Filing

The Madrid Protocol provides a centralised system for seeking trade mark protection in multiple participating countries through an international application based on an eligible home-country application or registration.

It can simplify the administration of international filings, but it does not create a single worldwide trade mark registration. Each designated country or region examines the application under its own laws and may refuse protection in whole or in part.

Fees depend on the countries selected, the number of classes and the applicable filing requirements. In some circumstances, direct applications in individual countries may be more appropriate.

APTS can assess whether the Madrid System or a direct filing approach is better suited to your intended markets and commercial objectives.

Why Overseas Trade Mark Searches Matter

Before adopting a brand or entering a new overseas market, it is important to investigate whether earlier trade mark rights may prevent or restrict its use or registration.

Overseas searches can help identify:

Identical or similar registered trade marks.
Earlier applications that may conflict with your proposed brand.
Potential conflicts involving related goods or services.
Relevant unregistered rights and marketplace use, where searchable information is available.
Potential obstacles to registration or commercial use in the intended market.

A search is not a guarantee that a trade mark is available or that it can be registered. However, identifying potential conflicts before committing to a brand or launching overseas can help avoid unnecessary expense, objections and disputes.

Check Your Australian Trade Mark Position Before Filing Overseas

International applications filed through the Madrid Protocol depend on an underlying Australian application or registration. The international registration remains dependent on that Australian base for the first five years.

This makes it important to review the Australian application before extending protection internationally. Relevant issues include:

Whether the correct person or legal entity owns the trade mark.
Whether the mark is represented in the appropriate form.
Whether the selected classes and descriptions adequately cover the intended goods and services.
Whether the Australian application or registration is vulnerable to opposition, cancellation or other challenges.

If the Australian application does not properly reflect the business’s requirements, it may be appropriate to consider corrective steps or a new application before proceeding overseas. This requires careful advice because a new application generally receives a new filing date and may affect priority and existing rights.

Managing an International Trade Mark Portfolio

Obtaining registrations is only one part of international trade mark protection. Different countries may impose different renewal, use, declaration and evidence requirements.

For example, some jurisdictions require evidence of genuine use or declarations of use at particular stages, while others may allow third parties to seek removal of registrations that have not been used for the required period.

APTS uses established systems to monitor international filing and renewal deadlines and coordinates with overseas associates to help manage ongoing portfolio requirements.

We also review overseas associate work and coordinate matters in accordance with the client’s commercial priorities and instructions.

Our International Associate Network

APTS works with a network of overseas trade mark attorneys, agents and intellectual property firms. This enables us to coordinate local representation and country-specific advice for businesses seeking protection in multiple jurisdictions.

Whether you are entering one new market or developing a broader international brand portfolio, we can help coordinate the process and provide a central point of contact in Australia.

Developing the Right International Strategy

International trade mark filing can involve substantial costs. It is therefore important to select markets and classes strategically rather than simply filing everywhere.

We consider your intended markets, business operations, manufacturing and distribution arrangements, competitors, licensing opportunities and budget when assessing an appropriate filing strategy.

We recommend obtaining trade mark advice before commencing overseas trading or making significant commitments to a new brand in another country.

Discuss Your International Trade Mark Requirements

If you are considering expanding your business overseas, APTS can assist with international searches, filing strategies, overseas applications and ongoing portfolio management.

Australian Patent & Trademark Services
Telephone: 1300 138 802