About IP

Overseas protection

Trade mark laws are not harmonised throughout the world and a separate trade mark application should be made in each country in which protection is desired.

It is also possible to obtain a single trade mark registration through the Madrid Protocol.

A Madrid application must be based on an existing Australian registered trade mark or pending application. The Madrid application is filed with IP Australia, and designates those member countries in which protection is sought. Each designated country will examine the application and unless an objection is raised within a specified period, the trade mark will be considered protected in that country as if it had been registered directly. The Madrid system makes it possible to record subsequent changes or to renew the registration centrally in a single step and using a single currency.

There are 84 members to the Madrid Protocol including the European Union and the USA. However, some of Australia’s major trading partners are not members and can only be covered by separate national registrations.

There are also regional trade mark registrations available. For many Australian trade mark owners the most important of these is the European Community Trade Mark registration, covering all member states of the European Union.

In many countries, the first person to apply for registration of a particular trade mark becomes the proprietor of that trade mark. If a trade mark is being used in that country (even if only for manufacturing goods for the purposes of exporting to Australia) and someone else registers the trade mark, the other person may be found to be infringing that person’s trade mark registration.

It is therefore important that trade mark searches be conducted prior to commencing use of a particular trade mark in any country and applications for registration be considered before or soon after use commences.