One of the ways in which trade mark owners in Australia may apply for registration of their trade mark internationally is via a treaty known as the Madrid Protocol. A person who has registered or applied for a trade mark in a country party to the Madrid Protocol (such as Australia), can lodge a single application, under the Madrid Protocol, designating the countries which are members of the Madrid Protocol convention in which it wishes to seek trade mark registration.
What is the Madrid Protocol?
The Madrid Protocol allows for international registration of trade marks in countries which are members of the Madrid Protocol treaty, and is administered by the World Intellectual Property Organisation (WIPO).
At present, there are 99 member countries of the Madrid Protocol treaty. These include the United States of America, China, the European Union, the United Kingdom and Australia.
Not all countries however are members of the Madrid Protocol. For instance, Canada, Indonesia, Brazil and South Africa are yet to join the Madrid Protocol. Thailand will officially become a member on November 7th this year.
The Application Process
In one trade mark application filed with WIPO via the Madrid Protocol, applicants can nominate multiple member countries in which they seek trade mark protection. The requests are then examined by the relevant intellectual property office of each nominated member country in accordance with their national trade mark laws.
As the application process involves lodgement of one application, it can save both time and costs that would otherwise be expended when making multiple applications internationally.
Base Trade Mark Application or Registration
It is important to note that for the first 5 years, an international registration obtained under the Madrid Protocol is dependent on the base Australian trade mark registration or application. This means that restrictions to the IP rights of the base trade mark registration or application during this five year period will also impact on the international registration.
Term of Registration
Once registered, an international trade mark registration is protected for a period of 10 years from the date of application, and can be renewed every 10 years upon payment of the relevant fees.
International Application direct to a Country’s IP Office
Another method of applying for an international trade mark registration involves filing a trade mark application directly with the intellectual property office of the country in which registration is sought. Direct applications are lodged with the relevant intellectual property office in each country and may require the assistance of a local agent in order to comply with the registration requirements of those countries.
Determining whether to lodge a trade mark application internationally under the Madrid Protocol or directly with another country’s intellectual property office will involve a consideration of various matters, including, amongst others, whether that country is a party to the Madrid Protocol.
Pointon Partners can assist you with your trade mark applications within Australia and internationally. If you have any queries in relation to this article or trade mark law generally, please contact David Mazzeo or Felicity Cara-Carson on (03) 9614 7707.