ask the expert | How do I protect my brand internationally?

by guest author jacqui pryor

I briefly touched on international trademark protection in the earlier Trademarks 101 post. Now is time to elaborate a little on that. 

If you export products or provide services outside of your home country, international trademark registration should be considered. Generally speaking, if you file in your own country first you will have a period of 6-months where you can file to other countries but essentially have the applications backdated to appear as though they were filed on the same date as in your home country – this gives you priority over anyone else that may have filed for the same trademark during those 6-months. You may still file internationally outside of that time frame, but, will no longer be able to claim the earlier filing date for priority purposes. 

Trademark registration is generally a country-by-country process. There is no such thing as a world-wide trademark registration. There are a few treaties in place that will allow you to register across a number of countries in a single registration – for example, in Europe, you may secure trademark registration for the entire European Union (27 countries) under one application. 

A lot of countries these days are also member to the Madrid Agreement and/or the Madrid Protocol. If you first file in your home country and your home country is a member then you may be eligible for filing for international protection under this Agreement or Protocol. This allows you to file a single application, based on your homeland trademark and simply choose which of the other member countries are required for your brand’s protection. Whilst each chosen country will still need to conduct independent examinations it certainly makes for an easier and more cost effective international registration. Ultimately, if each chosen country approves your trademark and registers it, you will have the same rights as you would have going directly to that country, via an agent or attorney, to secure protection. 

Australia is a member to the Madrid Protocol and accordingly if you are basing an international application on an Australian trademark you may choose from any of the other protocol members. Other countries, such as the USA are members to the Agreement as well as the Protocol, so if basing an international application on a USA trademark you could select from members of each the Agreement and the Protocol. 

Where eligible and viable, I would always encourage the use of the Madrid system for those wishing to secure overseas brand protection, as it allows you to appoint a single agent to attend to the application (instead of needing an agent in every country), and will save thousands and thousands of dollars in the long run. Strict criteria apply so advice should always be sought before investing in such an application. 

If you are unable to file via the Madrid System, be that because you are not originating from a member country, or, the countries of interest are not available under the system, for the most part you will need to file separate applications with each country/area required. Generally speaking, this does require you to appoint an agent in that country for the government department to communicate with. 

What does it cost to Register an Overseas Trademark?

This really depends on:

What goods and/or services you need your trademark to be protected in relation to (just as it does with a national trademark); 

The countries you are interested in; and 

Whether you are able to file under the Madrid system or need to file separate applications. 

If you are based in Australia, note that Austrade offers Export Marketing Development Grants to exporters and overseas promoters - intellectual property expenses, including trademarks, may form a part of international promotion expenses for the purposes of receiving a grant. These would need to be structured as a part of your marketing plan, rather than simply protection for the sake of it. Certainly check out Austrade’s website if you think this may apply to you. There are also firms around that provide specialist services in relation to these grants to ensure you get the most return possible. 

Questions? Feel free to comment below! I will be monitoring this thread and happy to answer any questions you may have about registering your trademarks, nationally or internationally. 

Jacqui Pryor is the director of Mark My Words Trademark Services. Jacqui has 13 years of experience in Australian and International trademark matters and her company aims to provide affordable, friendly and reliable services to small businesses in an area often assumed reserved for big business. Click here to receive your free Australian trademark search.