If you have big plans to expand your brand on a global scale, the countries that you wish to use or potentially license your trade mark in will affect the way in which you approach the protection of your trade marks.

If your company is in Australia and one of the countries you wish to license/use the trade mark in is Australia, then a good place to start is with an application to register the trade mark in Australia.

Once the Australian trade mark is lodged you will receive a trade mark base mark number that we can use to lodge international trade mark applications under the Madrid Protocols.

The Madrid Protocols are a system based on international treaties which make it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated ‘Contracting Parties’ (States and organizations party to the Madrid system).

The Madrid System for the International Registraion of Marks is governed by two treaties:

  1. The Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended in 1979, and
  2. The Protocol relating to that Agreement, concluded in 1989.

The effects and advantages of the Madrid Protocols

The effects of an international registration in each designated Contracting Party are, from the date of the international registration, the same as if the mark had been lodged directly with the office of that Contracting Party, if no refusal is issued. An international registration is effective for 10 years.

The Madrid system offers several advantages for trade mark owners:

  • An international registration may be obtained by simply filing one application with the International Bureau (through Australia as the home country), in one language (English) and paying one set of fees;
  • administrative changes to your registrations, such as a change in name and/or address, which may be recorded with effect for all designated Contracting Parties by means of a single step.

The International Bureau publishes a Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol.

If you would like to know more or need any assistance, feel free to contact us at Antcliffe Scott, we’d be more than happy to help!

Antcliffe:Scott Lawyers