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Routes for International Trademark Protection.
As mentioned in our overview article, trademark rights must be pursued individually in each country for which protection is required. The following outline describes some of the more common steps used to secure international trademark protection. Many variations are available, and Churchill Attorneys can provide more detailed advice specific to your needs.
Typically, the owner of a brand will instruct their attorney to apply for registration of their trademark in their home country. If the owner also wishes to seek protection in other countries, there are a number of avenues available. If the international application is filed within six months of filing date of the domestic application the international application will retain the earlier filing date.
While it is possible to file trademark applications directly into each country desired, many trademark owners take advantage of the Madrid System for international trademark registration. This system allows for the protection of a trademark in a number of countries by the filing of a single application, and can provide significant cost savings. Countries that are part of the Madrid System include Australia, China, Korea, European Union, France, Germany, Italy, Japan, Netherlands, Russian Federation, Spain, Switzerland, Sweden, United Kingdom and United States of America.
Given that Australia is part of the Madrid System, a local trademark owner is able to take advantage of the system by filing an international application with the Australian Trademark Office. An international application may be based on an existing Australian trademark application or registration, and must designate at least one country within the Madrid System.
The international application is processed by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) who perform a simple formalities check for the correct fees, forms etc. Once all formalities are satisfied, the trademark is published in the International Register, and a Certificate of Registration is forwarded to the owner.
The international application is then transmitted to each designated country for a more substantive examination according to the laws of each country. If any objections are raised, they are communicated to the owner via the IB and steps must be taken to overcome the objections within certain time limits. Where an application is successful before the Trademark Office of a designated country, the resultant Registration has the same effect as a regular domestic registration in that country. Further countries can be added to the international registration at a later date (termed “subsequent designations”).
Where the trademark owner requires protection in many European countries, then a Community Trade Mark (CTM) may be pursued. A CTM covers all Member States of the European Union (27 as at July of 2010) with a single application. A CTM may be applied for directly (i.e. by filing an application directly with the relevant authority in Europe) or via an international application under the Madrid System as discussed above.
The decision as to which route is most appropriate for securing protection for your trademark will be a complex consideration of many factors including the necessity of making priority claims , timing, cost as well as the “risk appetite” of the owner. Churchill Attorneys will be pleased to provide detailed advice on local and international trademark applications.
