Time to enter the global market? Protect your brand with international trade mark registrations
So far in this five-part series, we have discussed the importance of creating a strong brand protection strategy in order to safeguard your assets here in Australia.
But what happens when you decide to expand your business and tackle the global marketplace? This post considers some of the steps you’ll need to take to ensure you are protected and operating legally in your overseas markets.
Do your research
Unfortunately, ‘global trade mark registration’ or ‘international trade mark registration’ does not exist, so you will need to undertake significant research on the laws and conventions of your chosen country to establish how best to protect your brand there. This is no easy task and in any case, you will almost always need to engage a lawyer or attorney either in Australia and/or in each of the overseas markets to assist you with this process.
You will also need to ensure that you are able to operate legally without infringing on any existing rights held by similar businesses within your industry, in each relevant overseas market. Trade mark registration is recognised on a per country basis, with the exceptions of Europe and Africa where regional trade mark registrations are also available.
Clearance checks and legal processes will need to be implemented; many of which are not dissimilar to those here in Australia, but they do vary. So, keep reading!
Options for registering your trade mark overseas
There are two options for overseas trade mark registration which we set out below.
1. Madrid Protocol
This is a process of international registration under a treaty recognised as the Madrid Protocol. Australia is a party to the agreement under the Madrid Protocol. Hence, where you have filed a trade mark application in Australia, registering international trade marks under the Madrid Protocol involves filing a single international trade mark application directly to the Australia Trade Marks Office (IP Australia), designating which countries or regions of the Madrid Protocol you wish to be registered for, accompanied by the designated fees.
This is generally the most straightforward option as it is both time and cost-effective where you intend to register in more than one overseas market. However, one potential disadvantage of using the Madrid Protocol for international registrations is that, if your application in Australia fails to register, so too does your international registrations. Hence, you should be confident that your Australian trade mark application has good prospects of achieving registration before registering overseas using the Madrid Protocol.
It is also important to remember that any of the countries included in your Madrid Protocol application can choose to reject your registration request. If this happens, you will need to engage a qualified trade marks agent in that country to prosecute the trade mark application on your behalf. This can sometimes result in more cost to you than had you filed the application directly with those agents in the first place!
2. Country-by-country
If you want to focus your international expansion on one or two overseas markets, you may decide to tailor your overseas protection strategy on a country-by-country basis. This can sometimes be tricky, as local laws and conventions can vary greatly. You will also need to engage a domestic lawyer or attorney in each of those countries who is qualified to file and prosecute the trade mark applications on your behalf. This option can become very expensive and time consuming if you wish to register in more than one or two overseas markets.
With regards to European protection, you can apply for a ‘Community Trademark’, which enables you to lodge a singular application for protection in all 27 EU member states. However, Community Trademarks by their nature are prone to opposition as conducting clearance searches in 27 countries is not generally feasible and so your risk of conflicting with similar marks in one or more of the EU member states can be quite significant.
Conventions, priorities and deadlines
Whichever option you use, it is also important to keep in mind that international conventions and each country have strict time limits and ‘priority dates’, and not all are the same.
Many countries and regions including China, Japan, German, Spain and Korea, operate on a ‘first to file’ basis. This means that the first person to file and successfully register a trade mark in those countries will be deemed the owner of that trade mark. This can create issues where you may have been using your trade mark in one of these countries, but didn’t register it straightaway. If someone else registers your trade mark in these countries first, it will be very difficult to claim your right of ownership. The owners of well-known brands such as Penfolds, Apple, Ferarri, Pfizer as well as celebrities including Justin Beiber and Michael Jordan are just some who have fallen victim to China’s trade mark ‘squatters’ as a result of China’s ‘first to file’ principle. Unless you have lots of time and money to start a brand war in China you will find it almost impossible to reclaim ownership of your brand in these countries. This is very different to Australia (and other countries such as the US and Canada) where prior use is recognised as a prior right of ownership of a brand, regardless of who files the trade mark application first.
Many countries allow you to extend your existing Australian registration and accept it as protected in that country after completing certain formalities. This is a result of these countries signing up to treaties and conventions such as the Paris Convention. Where you apply for protection in a contracting country of the Convention and then apply for protection in other contracting countries, within six months of the date you filed your original application, you can claim ‘priority’ so that protection for your trade marks in each contracting country will backdate to the original filing date of that first application.
Hence, if you file a trade mark application in Australia, you will have six months to file trade mark applications in other contracting countries such as the US, Canada or the UK and protection for these overseas trade marks will backdate to the date you first filed your trade mark application in Australia. For more information check out The World Intellectual Property Office (WIPO) website for the list of the 176 contracting countries to the Convention.
The Paris Convention doesn’t prevent you from filing a trade mark application overseas at a later date. However if you don’t file within the six month timeframe, your overseas trade mark applications will lose priority under the Convention. Hence, protection will only apply on and from the date you filed or registered the overseas application, depending on the local laws of that particular country. So it is important to consider your international brand protection strategy around the same time you file your Australian trade mark application.
Is overseas brand protection really necessary?
In a word, yes! With the online world creating a global market for businesses of all shapes and sizes, international protection of your brand is more important than ever. So, if you are intending to promote and sell your goods or services in overseas markets (eg via your ecommerce website) then you need to ensure that you can do so freely and have the necessary protection in place, just as you do in Australia.
Choosing not to register and protect your interests outside of Australia allows the possibility for others to make use of your brand overseas and potentially harm your reputation and/or opportunities for international expansion.
Here are some factors to consider when deciding whether or not to protect your brand overseas:
- Are you exporting products, selling your services, or promoting or licensing your brand in overseas markets?
- Where are sales most likely to occur, at least initially and, most significantly?
- Where do you want to prevent competitors from using your brand?
- Is your brand in use or intended to be used in a “first to file” country?
- Are you trading in high risk counterfeit and piracy countries such as China, Korea or Taiwan?
So, what next?
Tackling overseas protection quite complex and therefore daunting for business owners, despite international treaties and conventions such as the Madrid Protocol. At Ethikate we are experienced and knowledgeable on overseas trade mark registrations and can offer specialist advice on how you can create a strong international brand protection strategy.
We will provide cost-effective, tailored solutions specific to your businesses’ expansion plans and can manage your international trade mark applications for you, right through to registration.
Contact us to speak to an experienced intellectual property lawyer and trade marks attorney about your international brand protection strategy today.
