Trademark Application Overseas
 Alex Ferrante

Alex Ferrante

Director of Australian Patent & Trademark Services Pty Ltd.

Steps to Register a Trademark (exporters)

There are many approaches that our Trademark Attorney firm uses to register overseas trademarks. Choosing the wrong pathway can allow a rival advantages over you in owning a trademark. This can lead them to eventually win the overseas trademark rights for the same or similar brand.

Did you know?

Contrary to belief, in some jurisdictions, registering a trademark is not the only method to argue that you own a Trademark, and ownership of a Registered trademark can be challenged?

And Australia is one of the countries. See for example the Clipsal Federal Court case where a judge ordered IP Australia to cancel (remove) multiple trademark registrations listed on the Trademark Register.

What are the steps?

Step 1: Search, search and search

Comprehensive searches for conflicts and infringing trademarks are a must. Logistically it is very difficult and costly to handle an overseas infringement – look at for example the expensive compensation claim against an Australian company exported Ugg boots into the United States – UGG Boot Court case we reported. The real question most businesses want to know is, has the right trademark database been searched and how do I know if a trademark hasn’t been missed? There is no easy way here. Your Trademark Attorney should guide and navigate this difficult landscape of overseas trademark searching for you. For example, if you want an Italian trademark registration, were you aware that there are three independent Trademark Registers that need to be searched before you trade in Italy?

Search Trademarks Lawyer to avoid any hassle

Step 2: Prepare and Lodge a Trademark Application

Quality content makes the difference whether you have a decent trademark case. It will also determine if your Trademark Registration could be cancelled due to faulty details. Many businesses we find unfortunately don’t have a decent trademark case because the content of their trademark application (registration) is missing vital trademark detail that we need to win their case.

Step 3: Trademark Application Assessment.

In Australia a trademark application is assessed 7 months following lodgement. Assessment is generally 3-12 months in overseas countries. The trademark application may be objected to on the basis that it doesn’t meet the criteria required by the Trademark Act 1995 (Cth). It is important to understand the risks and implications of any trademark objections. A Trademark Attorney can advise you and prepare legal submissions which optimise your chance.

Step 4: Acceptance of the Trademark Application

If accepted by the Trademark Office, then there is a freeze “2 months” in Australia (or 3 months in most overseas countries) period by which others can oppose Registration. Trademark Oppositions are rare but if they occur they are stressful and can take 12 months to resolve. Depending on the strength of your trademark position, you may lose your brand and endure substantial cost.

A comprehensive Trademark Attorney search is recommended so your Trademark Attorney can possibly spot this potential in advance, before you even lodge a trademark application.

Step 5: Registration for 10 years

Once the Trademark opposition period is finished,  the trademark is registered, and a Trademark Registration Certificate issues. Then it’s up to you to comply with Trademark laws and rules in order to prevent removal of the trademark rights. Your Trademark Attorney can assist you ensure you meet the trading requirements.

Trademarks – the Easy Way

Patent and Trademark Lawyers for Registration Process

If you want your own Trademark Attorney to represent you, manage the trademark process, and advise you on what to do when issues occur, then contact our Trademark team on +(61) 1300 138 802 or email our firm today.

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