International Trademark Registration

International trademark registration allows businesses to protect their brand in multiple countries. Unlike domestic trademark registration, which only provides protection within a specific country, an international trademark helps safeguard your brand across various jurisdictions.

There are two ways to achieve international trademark protection. One way involves filing individual applications in all relevant jurisdictions. Another way is to utilise the Madrid Protocol, managed by the World Intellectual Property Organization (WIPO). The Madrid Protocol enables businesses to apply for trademark protection in over 130 countries with one single application.

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Securing an international trademark is crucial for businesses expanding overseas. Key benefits include:

·        Brand Protection– Prevents competitors from using similar names or logos in foreign markets.

·        Legal Rights– Grants exclusive rights in chosen countries, allowing legal action against unauthorised use.

·        Business Value– Enhances credibility and value when entering international markets.

·        Simplified Process– One Madrid Protocol application can cover multiple countries, reducing paperwork and costs.

Without international trademark protection, your brand may be at risk in overseas markets, leaving it vulnerable to infringement.

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There are two main ways to apply for international trademark protection:

Madrid Protocol Application (via WIPO)

• A centralised system for filing in multiple countries that are signatories to the Madrid-Protocol.

• Requires a basis trademark application/registration in your home country.

• The application is reviewed by WIPO before being forwarded to chosen countries.

Direct National Applications

• Individual applications must be submitted to each country’s trademark office directly.

• Allows customisation based on each country’s specific rules.

• Recommended if protection is needed in a few select countries, or countries that aren’t signatories to the Madrid-Protocol.

Choosing the right method depends on your business goals and the markets you wish to enter.

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The process for international trademark registration typically involves:

1. Filing a National Trademark – Before applying internationally, you should have a registered or pending trademark in your home country.

2. Select Target Countries – Decide where you need protection.

3. Submit International Applications – Apply through WIPO under the Madrid Protocol or file directly in each country.

4. Examination & Approval – Each country’s trademark office will review and assess your application independently, based on their national rules and regulations.

5. Publication & Opposition – If no objections arise, the trademark is published for possible oppositions.

6. Final Registration – If no opposition is filed by third party, your trademark will proceed to registration.

7. Use Trademark – Once registered, you should ensure that your trademark is used in all registered jurisdictions to avoid possible cancellation based on non-use.

8. Maintain Trademark – Note that some trademark offices require you to submit evidence that your trademark is in genuine use in their jurisdictions every few years, for example in the United States and the Philippines. Failure to timely file the evidence of trademark use may lead to cancellation of your trademark.

9. Renew Trademark – Remember to renew your trademark by paying the renewal fees every ten (10) years in most jurisdictions.

The process from filing to registration can take 6–18 months, depending on the jurisdiction.

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The cost to register a trademark internationally can vary and depends on:
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• Number of Countries – Each country has separate official filing fees.

• Number of Classes – A trademark must be registered under relevant categories of goods/services. Each additional class increases the cost to file the application.

• Possible Objections and Oppositions – Costs vary based on application complexity and assistance required.

A rough estimate:

• A$1,000+ per country for a standard registration.

• Additional fees apply for additional classes and to respond to possible objections and oppositions

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How Long Does It Last?

An international trade mark is valid for 10 years from the filing date.

Renewal

• Trademarks can be renewed indefinitely every 10 years (in most jurisdictions).

• Some countries require proof of use to maintain registration every few years.

• Failure to maintain and renew can result in loss of protection.

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When applying for international trademark protection, businesses may face:
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• Similarity Objections – Your application may be rejected if it conflicts with an existing trade mark.

• Different Legal Requirements – Each country has unique laws and filing procedures.

• Oppositions – Third parties may challenge your trademark during the publication stage.

• Delays – Some countries take longer to process applications (e.g. Canada, India, Vietnam).

To avoid issues, it’s important to conduct trademark searches and seek professional advice before applying.

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