How do I File my Trademark Overseas

Aug 12, 2015
Reading Time: 2 minutes
Written by Dominic Woolrych

1. Trademark in every country you are seeking trademark protection in.


2. The Madrid Protocol (in no way related to Tom Cruise completing an impossible mission)

Now we’re talking. If you are looking to trademark in several other countries, this may be the most efficient method.

The Madrid Protocol is an international treaty entered into by 95 members including the United States, the UK, Singapore, and Australia. It is administered by the International Bureau (IB) of the World Intellectual Property Organisation in Geneva (definitely sounds like a spy agency).

It is simply a streamlined process.

You file a single application through IP Australia, selecting which countries you are seeking trademark protection in. However, you will still have individual, separate trademark applications in each country, which is examined according to the laws in each individual country.

There are several requirements to qualify for an application under the Madrid Protocol (it sounds so cool; I can say it all day. Madrid Protocol. Madrid Protocol. Madrid Pro…)

  1. you must have an Australian application and/or registration to base this application on;
  2. you must be an Australian national, reside in Australia, or be a person or organisation with a business premises in Australia (more information here);
  3. the mark on your international application must be identical to the one in your Australian application/registration;
  4. the goods and services in your international application must be covered by the claims in the Australian application/registration (more information here); and
  5. the applicant on the international application must be the same on the Australian application/registration.

Your international registration, if successful, lasts for 10 years with the option to renew every every 10 years, through a single request. If you decide to trademark in more member countries, you can easily make subsequent designations.

What if the country I’m seeking trademark protection in is not a member to the Madrid Protocol?

If this is the case, you will have to file an individual trademark application directly to that country.

Unsure where to start? Contact a LawPath consultant on 1800LAWPATH to learn more about customising legal documents, obtaining a fixed-fee quote from our network of 600+ expert lawyers or to get answers to your legal questions.

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