Australia: Trade marks: is your brand protected internationally?

One of the common errors brand owners make when seeking protection of their trade marks is the failure to recognise that only seeking to protect their trade marks in Australia, means that their trade marks will not generally be protected in other countries.

Trade marks are territorial rights, which are protected through a registration or grant procedure. This means that trade mark rights can generally only be enforced in countries or Jurisdictions where protection has been applied for, granted, and remains in force.

This is a particularly important issue to be aware of if you are a trade mark owner who exports branded goods. It is also important for trade mark owners to consider whether it is likely in the future, that the business may expand overseas. This could occur in various ways, including exporting of branded goods; a partnership or licensing arrangement with an individual or company in a foreign country, or expansion of the business into an overseas region. Trade mark rights are not static and need to be reviewed and updated as your business grows and changes, including into overseas markets.

If trade mark rights are territorial, how do brand owners best seek protection in the countries or regions that are, or may in the future be, important to the business? One of the primary ways to seek protection in respect of your trade marks on an international level is through the Madrid Protocol (MP).

What is the Madrid Protocol?

The MP is a treaty providing for the international registration of trade marks. This treaty is administered by the International Bureau (IB) of the World Intellectual Property Organization in Geneva Switzerland. There are currently 91 contracting parties to the MP, with two of the most recent countries to join being New Zealand and India.1 The MP includes defined regions as well as individual countries, for example, the European Union (EU) is considered a separate member in addition to each of the EU countries, as the EU maintains a separate trade marks register to those of individual members of the MP. A list of the current contracting parties (Jurisdictions) is set out below.

Based on a local application(s) and/or registration(s) in a MP Jurisdiction, subject to meeting the eligibility requirements to utilise the MP, trade mark owners can make a single International Application in English and pay one set of fees to seek trade mark protection in both their primary and other Jurisdictions (which are members of the MP). This eliminates the need for trade mark owners to apply for, and maintain, individual national applications in each country of interest.

Additional Jurisdictions can also be added to the International Registration (IR) as the owner's business expands or further Jurisdictions of interest join the MP.

From an Australian perspective

Trade mark owners who have sufficient standing in Australia,² and have an Australian trade mark application or registration, can apply for an IR designating any of the Jurisdictions which are contracting parties to the MP.
Applications for an IR are initially lodged with IP Australia (IPA) (with the requisite official fees) and the IR must be based on an existing Australian application or registration. The owner details of the IR must be the same as those set out in the Australian application or registration. In addition, the trade mark, and the goods/services must be identical to (or in the case of the goods and services a sub-set of), those included in the Australian trade mark application/registration being relied upon.

Once the IR is filed, it is possible to add further Jurisdictions to the IR (for the same mark and for the same goods/services only), at any time. This means that if your commercial interests expand into new countries which are MP Jurisdictions, then those new Jurisdictions can also be added as designations (i.e. applied for countries) to the current IR.

The IR Application, once filed, will undergo an initial preliminary check by IPA to ensure it meets all threshold requirements. It will then be forwarded by IP Australia to the IB for an irregularities review (for example classification issues) If there are no irregularities (or they are overcome), the IB will then forward the IR Application to the respective trade marks offices of the relevant Jurisdiction designations for examination purposes. In the event that any issue precluding registration is identified by any of the Examiners in respect of any Jurisdiction and an adverse report issues, this is reported to the trade mark Applicant so it can be considered and dealt with to try and overcome any issue to proceed the IR to registration.

If no adverse reports issue, (or they are overcome), the designated Jurisdictions will then give effect to the IR as if the IR Application was a national trade mark. In other words, the mark achieves registration in that Jurisdiction and is afforded full protection under the local law that would otherwise be afforded to a locally filed registration in that country (or region such as the EU).

Advantages

Some advantages of filing an IR include that:

• Utilising a centralised international trade mark registration system is generally a more cost effective way of seeking protection in a number of Jurisdictions. This is primarily due to the fact that local associates are not required to be involved in the filing or registration process (unless an adverse report issues).
• Official fees are typically upfront, at the time of filing (other than certain countries that require payment of a secondary fee to enable registration, i.e. Japan).
• The Applicant retains full control of the IR from Australia and only calls on the assistance of local associates when required (i.e. when an adverse report issues).
• A single request (lodged via IPA), with the relevant fees, is all that is required to make changes to (such as recording a change of owner name/address), and renew the IR in relation to all designations.³ Accordingly, ongoing administration of the IR is simple and cost effective over the long term.

Disadvantages

Some disadvantages of filing an IR include that:

• Not all countries are parties to the MP. If protection is sought in a country which is not part of the MP, for example Canada is currently not covered by the MP, it will be necessary for a national application to be lodged with the assistance of a local associate.
• The IR is dependent on the Australian basic application/registration for the first 5 years. This means that if the Australian application/registration upon which you base your IR does not proceed to registration, or is subsequently successfully opposed, removed or cancelled, the IR will also suffer the same fate (a process known as "central attack") and cease to exist. However, in the event of this occurring, there are provisions for the IR to be transformed to a national application in each of the designated Jurisdictions upon payment of the requisite fees. This process generally allows owners to retain the original priority date for those Jurisdictions (normally the filing date), which can be critical in terms of maintaining protection of a mark in important markets (particularly those countries that rely on concepts of "first-to-file" rather than "first-to-use" to determine trade mark rights). Beyond the initial 5 year period, the IR is no longer linked in this manner to the relevant Australian registration.

Is the MP right for you?

Businesses should review and consider where their businesses are headed in terms of overseas growth and use of their trade marks outside of Australia. If you use, or are considering using, your brand overseas, contact us to discuss whether the MP is a viable option for protecting your trade marks or the strategy that may best work for your business.

Also, if you already have an IR, now is also a good time to find out whether additional Jurisdictions of interest may have joined the MP, and whether a subsequent designation should be considered to expand your trade mark protection.

Countries currently party to the Madrid Protocol

*Effective from 16 October 2013

Footnotes

¹Thailand is in the process of being a member of the Madrid Protocol.
²Is an Australian national , resides in Australia, or owns a real and effective industrial or commercial establishment in Australia.
³The initial term of protection once granted is 10 years. This can be renewed upon payment of the requisite fees.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.