Overseas protection

Having a trade mark registration in one country will only protect your trade mark in that country.  As such, you should register your trade mark in every country to which you export or manufacture.

Some countries (e.g. Australia) have common law rights like New Zealand (i.e. you can gain rights in an unregistered trade mark by virtue of extensive use).  However, most overseas countries have trade mark rights by registration only.  This means that unless you have a registered trade mark in that country, you have no rights in your trade mark at all.

It is unwise to start exporting to a rights-by-registration-only country until you have filed an application for registration of your trade mark.  Failure to register your trade mark in such a country means that someone can see your products on the market in that country, check and find out that your trade mark is not registered, register the mark and then hold you to ransom: you either have to buy or licence the mark off the person who has registered it or change your trade mark for that country.

Madrid Protocol

The Madrid Protocol allows a single, multi-country trademark application to be made, designating any number of Madrid Protocol member countries (see the WIPO website for a list of Madrid member countries).  Ultimately, your application results in an “International Registration” that extends to all of your designated countries.

The cost of a Madrid Protocol application depends on which countries you are seeking protection in, but is generally cheaper than individual applications for protection in each country.  Since fees are different for each country, we can provide a cost estimate only on the basis of a list of selected countries.

The cost benefits of using the Madrid Protocol really kick in when procedural matters, such as renewal of registrations and recording changes of ownership, name, or address, need to be carried out.  This is because a single request is filed with WIPO, rather than a request needing to be made in each individual country, as is the case where the trade marks were registered separately in each country.

There are still some limitations to using the Madrid Protocol as a portal for filing overseas trade mark applications.  Please contact one of our Patent Attorneys to discuss your particular requirements.

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