Are you a small business owner seeking to register a trademark to protect your intellectual property (IP) overseas? If you have registered your logo, slogan or other IP associated with your brand within Australia, international registration can help to further safeguard your business interests.

This can be done through an application under the Madrid Protocol. For more information on how you can best protect your business’s most valuable asset, LawPath has access to experienced IP attorneys who can assist you with your trademarking needs.

What Is the Madrid Protocol?

Put simply, the Madrid Protocol is a treaty which provides for the registration of IP for individuals and businesses. It aims to harmonise costs and processes associated with trademark applications and is managed under the World Intellectual Property Organisation (WIPO).

Upon registration with the Protocol, your trademark can be registered in any of the signatory countries, of which includes China, Japan, the US, and foreign markets in Europe.

Before Applying Under the Protocol

Before you apply for an international trademark, you should ensure that:

  • Your trademark meets Australian IP standards;
  • Your international trademark application is identical to what is contained in your Australian registration;
  • You examine the costs, by using WIPO’s fee calculator.

The Application Process

Your application to the Madrid Protocol will be submitted through IP Australia. LawPath can help you prepare and submit this application to ensure that you address all formal requirements needed. It is important to seek legal guidance on your application as it will be rejected if not filed correctly.

If successfully registered, your trademark will last for 10 years and be renewable afterwards as well.

How Protection Works

Once the trademark has been registered by the system, the WIPO will examine requests for extensions of protection to various signatory countries.

Trademark registration bodies within each individual country will then review your trademark in alignment with the standards and requirements of their country. If your trademark successfully passes their checks, protection within that country will be granted.

Benefits of Madrid Protocol Registration

There are numerous benefits to enhancing protection of your commercial interests through the Madrid Protocol. For example:

  • Exclusive rights to commercialise goods in foreign markets;
  • The ability to extend the use of your trademark through licensing and assigning;
  • A simplified and streamlined process to protect your brand across legal and geographical systems;
  • Cost savings for small and medium sized businesses;
  • Consistent in growth in the number of signatory countries, with almost 52,000 registrations with WIPO in 2015

Conclusion

Protecting intellectual property from the early stages of your business is essential to help safeguard your creations and to help them grow alongside your brand. Irrespective of whether you wish to have your trademark rights recognised overseas, you should still attempt to gain protection domestically.

LawPath recommends you consult an experienced IP attorney for further information on how best to file a trademark application and how the Madrid Protocol may assist you.

Interested in trademarking a logo, slogan, sound, smell or movement for your business?
Contact a LawPath consultant on 1800 LAW PATH to discover more and obtain a fixed-fee quote from our network of 600+ expert lawyers for your legal questions.

Carmen Zhu

Carmen is a Paralegal working in our content team which aims to provide free legal guides to facilitate public access to legal resources. With an interest in consumer and professional negligence law, her primary focus is on the importance of expanding legal awareness to business longevity.