Dynamic Export

Things you should know

1. You need to register your trade mark in Australia first before applying for international protection under the Protocol.
2. Application does not guarantee registration in all countries—there could still be objections in other countries. “This places a premium on due diligence,” explains Andrew Hudson, partner at law firm Hunt & Hunt. “For example, people might put a lot of money and time into a trade mark and they register it here, but then go to the US and find out they can’t register it there; someone else already has it. Or they find out that the relevant name has a different connotation, or an irrelevant or offensive one. You need to do your homework first.”The Madrid Protocol makes it easier to conduct a search internationally as there is one governing body, WIPO, and one register. The general public can also access information online through the Madrid Express database and through the ROMARIN database, both via WIPO.
3. It can be expensive to register through the Protocol, although it is cheaper than approaching every single jurisdiction individually. Make a cost analysis to find out whether it is worth the effort, or whether multiple applications are best.
4. The Protocol does not provide a notification system of potential breaches. An exporter still needs to be able to monitor offending behaviours and then bring an action against infringement. Hudson explains: “This is a practical issue. You must continue to be alert to the fact if there is anybody else using your trade mark. If you’re working in a number of different countries you’d usually have an agent or a distributor appointed to represent your interests, and those people keep an eye out for possible infringements.”

Outside the Madrid System

If a country is not a member of the Madrid Protocol, an application for trade mark registration needs to be made direct to that country. As Rinder advises: “For Australian businesses, some countries of note that are not included in the Protocol may be New Zealand and Canada.”

Matters for consideration for exporters include whether their proposed trade mark is available in that particular country, the cost and process for registration, the value of having the trade mark registered there, the level of IP protection and the ease of enforcement. If this assessment is satisfactory, then steps can be taken to initiate the registration process.

Hudson advises that registration in your originating country is a prerequisite, and due diligence is a must. “Look at what the state and federal government can do to provide resources here and overseas on market issues. Make sure that whether you go to a trade mark attorney, patent attorney or an IP firm, they have good networks overseas. If you’re going to be exporting into one or more countries, these are areas where you really need to be dealing with organisations and people who have good contacts and good networks overseas.”

Find out more

For more information on registering your trade mark, visit IP Australia’s website (www.ipaustralia.gov.au). For a full list of countries under the Madrid System, and for further details, see the World Intellectual Property Organisation website (www.wipo.int/madrid/en/).

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