Please note that new countries are constantly becoming members of the Madrid Protocol and accordingly the following list is current at the time of publication.
What is the Madrid Protocol?
The Madrid Protocol is a system administered by the World Intellectual Property Organisation (WIPO) which allows for registration of a single trade mark in nominated member countries. There is no such thing as a global trade mark, but this centralised system makes it more affordable for applicants to pursue trade mark protection in multiple countries via a single application.
Australia joined the Madrid Protocol in 2001. Since then, owners of registered trade marks in Australia have been able to extend that trade mark protection into other designated countries – and similarly, applicants who have a trade mark registration in another member country have been able to file an application for protection in Australia.
To be eligible to file an application from Australia through the Australian trade marks office (known as the ‘Office of Origin’), the applicant must be an Australian national and/or be domiciled in Australia. If the applicant is not an Australian company or national, they must have a real and effective industrial or commercial establishment in Australia.
If you intend making an international application through the Madrid Protocol Trade mark system, it will essentially mirror the details of your Australian application or registration. The owner must be the same, the trade mark must be identical and the goods/services must either be the same or must be narrower in scope.
It is important to note that any cancellation or restrictions placed on the Australian application or registration will apply to the international registration.
In light of the above, it is crucial that applicants ensure that they’ve done thorough preparation including a Madrid Trade Mark Search and country specific searches before filing via the international system. Ideally, we recommend that applicants only invest in an international application through the Madrid Protocol Trade mark system once they are reasonably certain that their Australian is ‘safe’.
Australia is also a member to the Paris Convention which, according to WIPO: ‘applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. This international agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries.’ It was adopted in 1883.
The Paris Convention basically enables priority rights. Under the convention, if you have previously filed the same trade mark in another country, you are allowed to claim an earlier priority date on your international application. The proviso is that you need to have filed your international application within six months from the date on which the trade mark was first filed. In other words, provided your international application/s is/are made within those first six months, it will be regarded by the designated countries as being filed on the date of your basic Australian trade mark application. It means your trade mark will be given priority over someone else’s application for the same trade mark provided their priority date is later than yours.
The timeframe is strictly limited to a six-month period and extensions are not possible.
If you engage MMW Trademarks to handle your priority international application, we strongly urge you to submit your claim at least four weeks before the six-month timeframe expires so that there is sufficient time to prepare and submit your application. Note, certain territories – particularly when not members to the Madrid Protocol may require a longer period of time to ensure a priority claim can be included in the application.
It is possible to file an international application at any stage after the six-month period has passed, but no priority can be claimed and these will only be examined as at the date of filing.
The cost of filing through the Madrid Protocol
The cost of filing for an international trade mark depends on a number of factors. These include:
- the countries being designated
- the classes of goods/services
- the colour of a logo mark (ie black and white vs colour)
There is a filing and handling fee, plus there is a fee payable per country. This fee varies depending on the country.
Our trade marks attorneys can advise on the most cost-effective and suitable solution for your international trade mark application. Sometimes, it is best to file for trade mark protection through a single application via the Madrid Protocol and in other instances, it is better to file directly with the individual countries you are interested in. Either way, the Madrid Protocol is a convenient and cost-effective solution for registering and managing trade marks across multiple countries.
MMW Trade marks has extensive experience in international trade mark applications and we have the knowledge and expertise to guide you through the process and achieve the best outcomes at an affordable cost. Please get in touch with our friendly team to discuss your international application.
