An Australian trade mark registration only secures your rights within Australia. If you wish to sell your product or services in other countries, you will need to register you trade mark in those jurisdictions as well. If you don’t register your mark, you run the risk of another party appropriating your trade mark.
A trade mark can be protected overseas either on a country by country basis, or via the Madrid Protocol international registration system. Trade mark protection via an international registration can cover nearly 100 countries that are currently signatory to the Madrid Protocol. A full list of these countries is available on www.wipo.int.
Our attorneys have extensive experience in all aspects of international trade mark protection via the Madrid Protocol and can ensure your rights are secured. They can also assist with direct filings in Australia, New Zealand, Papua New Guinea and Vanuatu, or in other countries through our network of trusted associates.
First to file vs. first to use
Trade mark owners should be aware that different countries have different rules when it comes to recognition of trade mark rights. Some countries follow a ‘first to file’ rule, whereas others, like Australia, recognise the rights of those who are ‘first to use’ a trade mark. A first to file trade mark system grants rights to the person who first filed a trade mark application, even if another party can show prior use of the trade mark. Some countries which follow a ‘first to file’ system include China, Italy, Austria, Portugal and Sweden.
Should you export goods to, or manufacture goods in, any ‘first to file’ countries, it is crucial that you file your trade mark application as early as possible to minimise the risk of another party obtaining the rights for your trade mark. In ‘first to use’ countries like Australia and America, a common law system exists whereby the first person to use a trade mark will have priority over a person who files a trade mark application at a later date.
Trade mark squatting
Trade mark squatting occurs when someone intentionally files a trade mark application for another party’s registered trade mark in a country where the other party does not hold a trade mark registration. These are also referred to as bad faith filings. The squatter takes advantage of a particular country’s first to file trade mark system to secure trade mark registration, usually with the aim of selling the registration to the foreign trade mark owner at an inflated price. This practice is quite common in China, and many well-known Australian brands have been affected by this practice. We therefore recommend Australian applicants seek early protection if goods are being manufactured in another country and imported to Australia.