International trademark applications
Trademark protection is granted country by country, so there's no such thing as a worldwide trademark. You can either file a single international application under the Madrid Protocol designating the countries you want, or file separately in each country through local attorneys.
If you've already filed in Australia, you have six months to claim that filing date overseas.
Feel free to get in touch and let me know which markets matter to you. Filing international applications is one of my core trademark services and I'd be pleased to set out the route, the country list and the likely costs before you commit to anything.
"Warren is an exceptional Patent and Trademarks lawyer. Extremely knowledgeable and efficient. I have been using his services for 3 years now and he has always gone over and above for us. He's helped us file multiple trademarks locally and internationally. Absolutely recommend his services for anyone looking for a patent and trademarks lawyer. Thanks Warren!"
- Lydia Tran
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
Which route suits you?
Madrid tends to suit you when:
You want three or more countries
All of them are Madrid members
You'd like one renewal date, and one place to record a change of name or address
Administrative simplicity over the next ten years matters to you
Direct filing tends to suit you when:
You want one or two countries
A market you need isn't a Madrid member
You'd like the specification tailored to each country's practice rather than tied to your Australian one
You'd prefer each registration to stand independently from the outset, without the dependency described below.
The country list often settles it. Three or more Madrid members often points to Madrid, and one or two countries, or a non-member, points to direct filings.
How the Madrid Protocol works
You need a base. A Madrid application has to be built on an Australian application or registration, called the basic mark, so filing at home comes first. → Trademark applications
You file through IP Australia, which certifies the application and forwards it to the World Intellectual Property Organization (WIPO).
WIPO examines the formalities, records an international registration, and notifies each country you've designated.
Each designated country then examines it under its own law. The international registration is an administrative layer, and each country still grants or refuses protection on its own terms. If the US examiner raises an objection, it's a US objection under US law, handled through a US attorney. Madrid saves you filing costs and ongoing administration, though it doesn't spare you national examination.
You can add countries later through subsequent designations, which is useful as the business expands or as new countries join.
One renewal, every ten years, covering the whole international registration.
Central attack, and the five-year dependency
For five years from the date of your international registration, it remains dependent on your Australian basic mark. If the Australian mark ceases to have effect during that period, the international registration falls with it, in every country you designated.
This is known as central attack. A competitor wanting to dislodge you across several markets can aim at your Australian trademark rather than fighting you country by country.
Three things soften this:
Transformation. If your basic mark does fall, each designation can be converted into a direct national application, keeping the original dates. It has to be done within three months of the cancellation, and it can cost roughly what filing directly would have cost in the first place.
A pending basic application isn't a trigger in itself. If your Australian application is still in examination at the five-year mark, nothing happens. Central attack only bites if the basic mark actually fails. One refinement worth knowing is that an action started inside the five years can still bring the international registration down even if it concludes afterwards, so what matters is when the attack starts.
Successful central attacks are reported to be uncommon. The consequence is severe and concentrated when it does happen, which is why it's worth understanding before you choose a route.
What follows from all this: if your Australian mark is facing an objection you haven't yet overcome, building an international registration on top of it may not be the best idea. Better to settle the Australian position first, or file directly in your key markets. → Overcoming trademark objections
The six-month deadline
Under the Paris Convention you have six months from your Australian filing date to file overseas applications which can claim the priority date of your Australian application.
Missing the six months doesn't stop you filing, though you lose the earlier date, which can matter if somebody else has filed something similar in the meantime.
Choosing your countries
The same discipline applies here as with patents, with one difference: trademarks are cheap enough that the list can be a little longer.
Protect where you:
Actually sell, or expect to within a couple of years
Manufacture, since trademark squatting can be a genuine risk in manufacturing-heavy markets
See a real prospect of somebody else taking the name first
Two markets are worth singling out.
China operates on a first-to-file basis with no use requirement, and trademark squatting there is well documented. If you manufacture in China or plan to sell there, filing early is a good defensive measure, since a squatter holding your brand can block your own goods at export.
The United States has a quirk worth planning around. A Madrid designation into the US doesn't require you to be using the mark there, so you can secure the registration before you've sold anything. Between the fifth and sixth year after your US registration date, though, you have to file a declaration of use with specimens showing the mark in actual use for the goods and services registered. Anything you aren't using has to be deleted from your registration.
US examination is also stricter than Australia's when it comes to specification wording, since US practice demands more precision about goods and services. It's worth budgeting for objections in the US rather than assuming a clean run.
Frequently asked questions
Is there such a thing as an international trademark?
No. There's no trademark that covers the world. The Madrid Protocol gives you one application that can designate many countries, though each country grants and examines protection under its own law.
How long do I have to file overseas after filing in Australia?
Six months from your Australian filing date, to claim the Australian date as your priority date under the Paris Convention.
What is central attack?
For five years from the date of your international registration, it depends on your Australian basic mark. If the Australian mark ceases to have effect within that window, the international registration is cancelled in every designated country. Transformation into direct national applications is available within three months of the cancellation.
Can I add countries to a Madrid registration later?
Yes, through subsequent designations, so you can extend protection as the business grows without starting again.
Should I use Madrid or file directly?
Madrid tends to suit three or more countries, and it's easier to administer over the life of the portfolio. Direct filing tends to suit one or two countries, non-member countries, and situations where a country's examination practice makes a tailored specification worthwhile.
Taking your brand overseas?
Let me know which markets matter and I'll come back to you with a filing strategy and quote.