Protecting your brand: Madrid Protocol 101

Protecting your brand: Madrid Protocol 101 article image

An Australian trade mark registration provides protection for your brand in Australia only. While that may be helpful in Australia, it is advisable to secure registration for your trade marks in each country where you do business, including countries where your goods are manufactured, and countries where your goods are sold or services provided. Many of Australia s trading partners are members of the Madrid Protocol, including China, Korea, Japan, Singapore, the United States of America, and countries in the European Union. As a general rule of thumb, if you wish to protect your brands through trade mark registration in three or more of these territories, it will best be done through an International Registration filed using the Madrid Protocol. What is the Madrid Protocol? The Madrid Protocol is a treaty providing for a centralized system of trade mark registration. It allows for a trade mark to be protected in numerous countries with just one application and resulting registration. This can provide for cheaper and simpler management of your trade mark portfolio. For example, the application will attract just one set of fees, and changes to ownership of the registration or attendance on its renewal can be completed with a single request instead of multiple forms to different Trade Marks Offices. This can result in savings at the time of launch, and also in reducing subsequent maintenance costs. Requirements for filing Although administered through the World Intellectual Property Organization (WIPO), the initial paperwork for a filing can be lodged locally with the Australian Trade Marks Office and official fees paid in Australian dollars. The application for International Registration needs to be based on an Australian trade mark application or registration. This is referred to as the basic trade mark. It can be a long established Australian registration, an application filed immediately prior to the filing of the International Registration, or anything in between. The International Registration must have the same owner, be for the same mark and claim the same or only some of the goods and/or services covered by the basic trade mark. It is advisable to have the application for an International Registration prepared and filed by a professional experienced in such matters, such as a trade mark attorney, as certain amendments are not permitted once the application has been filed and there are deadlines to monitor and meet. Registration process Once an application for an International Registration has been lodged with the Australian Trade Marks Office, it is checked for formalities and, if all is in order the application is forwarded to WIPO where it undergoes further formalities and classification checks. Then, once all is in order, a Certificate for the International Registration is issued. This is a misnomer, as at this stage no registration rights have been secured. Rights are only granted once protection for the International Registration has been extended to designated countries. This usually occurs after national examination processes.

WIPO sends the details of the International Registration to each of the relevant Trade Marks Offices, which then treat the International Registration in much the same way as they would a nationally filed application. Each national Trade Marks Office has its own requirements for registration. Where no objections are made by the Trade Marks Office, and no opposition is filed by a third party, the International Registration can proceed to protection in that particular country without any further action being taken. Where objections are raised, the applicant has the option of responding to the objections or taking no further action. Sometimes an objection is made in respect of only some of the goods and/or services claimed. In some countries, like Australia, even where no response is filed, in the absence of opposition from a third party protection for an International Registration will automatically be extended to all of the other goods and services. If a response is to be filed, an address for service in the relevant designated country will be required. You will need a trade mark attorney on the ground and Australian attorneys have access to associates worldwide. International Registrations are afforded the same rights as nationally filed applications. The protection provided by an International Registration runs for a term of 10 years from the date of its filing and can be renewed indefinitely on payment of the appropriate fees. It is possible to add further countries to the International Registration as your business grows and/or as more countries join the treaty. For example, preparation is currently being made for New Zealand to join the Madrid Protocol. Dependency period It should be noted that the International Registration is dependent on the Australian application or registration on which it was based for a period of five years after the filing date of the International Registration. Accordingly, owners of International Registrations should ensure that the basic trade mark is not compromised during the five-year dependency period. Otherwise, the International Registration risks cancellation, for example, through a failure to renew the basic mark or through a successful removal action for non-use. There is an increased risk when basing an International Registration on an Australian application because if the application does not proceed to registration, the International Registration will be cancelled. In the event of a cancellation there is, however, a limited time in which it is possible to transform the International Registration into corresponding national applications or registrations. When to act An application for an International Registration can be made anytime once a basic trade mark is in place. Where the International Registration is filed within six months of the filing of the basic trade mark, it can receive the benefit of the basic trade mark’s priority date. This effectively backdates the filing date of the International Registration, and this strategy of claiming convention priority can be used to spread filing costs between an initial, national filing and an International Registration. This strategy can also be used to assess the prospects of an Australian application before committing to an International Registration for the same mark. The Australian Trade Marks Office currently examines applications within four-to-five months of filing; however, this period can be shortened to one-to-two months by applying to have the examination expedited on the basis of wishing to file a corresponding application overseas. The best way to assess the availability of your chosen trade mark and the likelihood of your Australian application or International Registration proceeding to registration is by conducting a thorough clearance search. This involves an assessment of pre-existing rights and is best conducted by a professional advisor before you launch a new brand. Securing registration for your brands in all relevant markets is an important step in protecting your business. This is often best done through an International Registration, which can streamline the process for obtaining and maintaining these rights and can achieve this in the most cost-effective and expedient manner.

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