Obtaining international protection for Australian trademarks: A practical guide

In an increasingly globalised world where the internet has helped to break down international borders, it is important for Australian business to consider international protection for their Australian trademarks.

There are a number of ways this can be done and it is essential to appreciate the advantages and disadvantages of using each method.

1. File a separate national application in each country where you seek protection. This procedure tends to be slower and more expensive than other methods and will likely require the assistance of trademark attorneys or lawyers in the subject countries. In some jurisdictions (for example, Thailand or Kuwait) this is the only available procedure as they are not members of the Madrid Protocol whilst in others i.e. China, a national application is the only way to know for sure that you have obtained a registration. It may also not be worthwhile to apply for a trade mark, say in Chinese or Arabic characters, in more than a single territory. This method of protection also requires maintenance of each registration individually.

2. File an international trademark application through the World Intellectual Property Organisation, under the Madrid Protocol, based on your original “base” trade mark application, for the relevant countries or geographical blocks of interest, including the European Union. This is generally the most cost-effective (where applying simultaneously for multiple countries) and flexible method for Australian businesses to register their brand or logo internationally, however, continued registration relies on the original “base
application” remaining active and on foot. 

Intellectual property often represents a significant asset of your business. Imagine Apple, Facebook, Twitter, Google or Yahoo without the ability to protect their brands internationally. The well profiled dispute between Apple and Chinese company Proview regarding ownership of the name ‘iPad’ in China, and Proview’s attempts to ban sales of the tablet in China is an acute reminder of the importance of protecting your product or brand from dilution in the international marketplace. Companies may obtain efficiency benefits and uniformity in international brand protection through the Madrid Protocol. International registrations can establish early rights for future growth and partnering in the target countries.

Your intellectual property can provide a competitive edge for your business in its own right and ensure you are adequately protecting one of your most valuable assets. While economic considerations will drive the decision as to whether to pursue registration internationally, and in which countries, the cost of early international registration is usually money well spent.