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Do I Need a Trade Mark Overseas?

Protecting your intellectual property within Australia is important, and that goes double when you’re operating internationally. Marketing your goods and services overseas is a major step forward for your organisation. However, it comes with new risks to your intellectual property, and it can lead to serious issues if you don’t have the proper protections in place. While there’s no such thing as an “international trade mark,” it is possible to obtain trade marks internationally. We’re going to cover the basics of international trade mark protection and what you need to know about protecting your intellectual property overseas.

The Purpose of Trade Marks

Trade marks are a form of intellectual property that are used by brands to identify their unique products and services. While a registered trade mark often protects things like logos, a trade mark can also be a letter, number, phrase, word, sound, scent, picture or aspect of packaging. Your trade mark is often closely associated with your brand, and it’s something your customers will use to recognise your company. Because of this, trade marks often hold large amounts of value. Registering your trade marks provides protection against unauthorised use of your intellectual property and helps you maintain your brand’s reputation.

Do I Need a Trade Mark Overseas?

Your Australian trade marks only provide protection within our national jurisdiction. If you’re an international company, or if you’re looking to offer your products and services in other countries, you’ll need to obtain overseas trade marks. Because there’s no such thing as an “international trade mark,” you will need to register your trade mark in each jurisdiction where you want to operate.
This also applies if you’re selling goods and services through international distributors. While you aren’t directly operating in other countries, registering your trade marks in those overseas jurisdictions is still important. If you don’t register your trade mark overseas, you might find yourself infringing on existing trade marks, or you could lose the right to use your trade mark in those countries.

How to Register a Trade Mark Overseas

You need to register your trade mark in each country or jurisdiction where you’re operating. There are two main ways of doing this:

  • You can apply directly to the trade marks office in each country to register your intellectual property
  • You can apply for a trade mark using the Madrid System which can allow you to register your intellectual property in any of the member countries
    If you’re only looking to operate in a small number of countries, applying for protection directly will usually be the simplest option. Each application will need to be prepared and lodged individually. Because every country has its own trade mark regulations, it’s often helpful to seek help from a trade marks attorney. They’ll be able to perform local searches and draft applications that give you the best protection for your trade marks.

The Madrid System

The Madrid System is an international trade mark protocol administered by the World Intellectual Property Organization (WIPO). Currently, 128 countries participate in the Madrid System, making it a simple way to apply for a trade mark in many jurisdictions. The major benefit of the Madrid System is that it allows you to file a single application that can be used to obtain trade mark protection in any, or all, of the participating countries. To file a Madrid System trade mark from Australia you must be one of the following:

  • An Australian national
  • An Australian resident
  • The owner of a real commercial or industrial establishment in Australia
  • A person or entity with an Australian business premises

The cost of using the Madrid System depends on the number of countries you’re seeking protection in. If you’re seeking protection for a trade mark in many countries, it’s typically more affordable and time efficient to apply through the Madrid System.

Looking to Operate Internationally? Protect Your Trade Marks with Kings IP!

Your business’ trade marks are some of your most valuable assets. Used to identify your products and services, a trade mark can hold incredible value, and having it diluted or replicated can seriously damage your reputation. If you’re thinking about operating or expanding overseas, talk to Kings IP about international trade mark protection! Obtaining international trade marks ensures you’ll always have the right to use your unique identifiers and protects your IP from being unlawfully copied. The trade marks attorneys at Kings IP are experts when it comes to the Australian trade mark system, and our international networks means we can help you seek protection anywhere in the world. Contact us today if you’d like to discuss protecting your trade marks in Australia or overseas – we’re always happy to help!

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