International trade mark registration (A.K.A. Madrid Protocol registration)

A single registration that can lead to protection in more than 80 countries

International registration is a very cost-effective method of filing trade mark applications into multiple countries. The process is often faster than for an application made directly into a country, and in a few countries requirements such as lodging evidence of use of the trade mark in that country are avoided or delayed.

A further significant benefit of an international registration is that it provides a single register on which renewal fees are paid, and on which changes of name or address are recorded. There is no need for separate action to be taken for every country, saving cost in the future.

International registration starts with filing a single application with the Australian Trade Marks Office acting as an agent for the World Intellectual Property Organization. The application identifies the trade mark, the goods and/or services to be protected, and the countries in which protection is sought. Costs depend on which countries are sought and how many classes the goods/services fall into.

The application can be ‘registered’ within months but does not provide enforceable rights at this stage. Applications are registered without full examination, after a brief ‘formalities’ examination by an International Examiner at the World Intellectual Property Organization.

Once registered, National Examiners in each of the countries identified in the application have 18 months to raise objections under their own national laws. The National Examiners will either extend or refuse protection in their country according to the same process and laws as an application made directly into the country. Local attorneys are only required in countries in which objections are raised.

Once each National Examiner’s objections, if any, are overcome, the trade mark is then protected (enforceable) in that Examiner’s country (assuming that no third party opposition is lodged – very rare).

Typically the process is completed in under two years, and can be a lot faster – say under six months.

It is possible to define some details of an application individually for every country designated, if necessary. Special care should be taken to tailor the application to local requirements of some countries, to maximise protection as well as to avoid unnecessary objections and the associated costs. For example:

  • for the USA, goods/services should be specified using wording pre-approved by the US Trademarks Office;
  • for China, goods/services should be very detailed, not broad – for example, ‘shirts, trousers, skirts, dresses, scarves’ rather than ‘clothing’;
  • alcoholic beverages are not registrable in Iran and should not be specified;
  • providing a translation of any non-English words contained in the trade mark can avoid objections.

The primary weakness of using the international registration system is that applications must be based on a home (Australian) application or registration, and actions affecting the home application also affect the international registration for the first five years. For example, if the home application is never registered, is amended to delete goods/services from the scope of cover, or is successfully attacked, the same consequences are visited upon the international registration. Each application should be considered on its own merits to assess these risks.

The World Intellectual Property Organization maintains an up-to-date list of the countries accessible via an international registration. Notably, Canada and South Africa are not accessible. Separate national applications are required if these countries are of interest.