The complex area of trade mark law can cause many business owners to take comfort…
Are My Trade Marks Protected in the Global Market?
With the routine use of eCommerce and the ease in which we now communicate internationally, the presence of SME’s in the global market is commonplace. What was once a process that took considerable time, international trade relationships are more readily achieved and within the grasp of any business wishing to expand in that manner.
‘Facebook’ is a well-known example of a company that grew from a college project with limited reach, to an all-encompassing global enterprise in a relatively short period of time. And although you may not consider yourself the next Mark Zuckerburg, I’m sure MZ himself could not have envisaged the success of his business in those very early days.
So regardless of where you are currently trading it’s important to consider the impact an international presence will have on how your trade marks are protected.
To prevent infringement, trade marks must be registered in every jurisdiction where trade occurs. A trade mark registered in Australia will protect it from infringement within Australia, but not New Zealand or the rest of the world. It might be the case that your trade mark is already being used in another country and if you’d like to check, you can access the Global Brand Database now.
Applications can be made with each country individually but the easier way (much much easier way) to approach multiple international jurisdictions is by lodging an application with the World Intellectual Property Organisation (WIPO).
WIPO implement the Madrid System which applies to its 98 members (covering 114 regions). A full membership list is available on the WIPO site so you can make sure the countries in which you intend to trade are included. China, the European Union, USA, Japan, New Zealand, India and the UK are among those countries who appear on the list.
How does international registration work?
- You must first apply for local trade mark registration in Australia. My previous article “Can I DIY my Trade Mark Registration?” addresses the steps in this process.
- Your international application must then be lodged online with IP Australia (either by yourself or with the help of a professional). Once they have checked it they will either send it to WIPO or issue you with an irregularity notice that must be addressed before the application can proceed. Keep in mind that your international application will have to reflect the same trade mark details and classes that you chose for your Australian registration. Any variation will hold up your application.
- Once verified by IP Australia the application is forwarded to WIPO who facilitate the lodgement of the application in each of the selected countries.
- Each member country you have nominated then applies their own local protocols, and provided there are no challenges to the trade mark or any other problems with the application, registration will be granted in 12-18mths.
What fees apply?
The Application Simulator tool on the WIPO website can help you work out the fees that will apply to your application. To use it you’ll need to know which classes and which countries you’ll be registering in. The cost will be displayed in Swiss Francs and the fees will need to be paid at the time you lodge your application.
IP Australia sets out the process well and there are many useful tools on the WIPO site to guide you, however, they can never completely address the full range of scenarios that may apply in your situation. So, if you wisely decide to seek professional advice, choose a Trade Mark Attorney or Solicitor who specifically deals with international trade mark registration.
“The opinions expressed by Smallville Contributors are their own, not those of www.smallville.com.au"
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