Asian Territories Join Global Trade Mark System

Belinda Slattery
  • Belinda Slattery - Senior Associate, Trade Mark Attorney
  • Senior Associate, Trade Mark Attorney "Every business has a brand and in many cases this is its most valuable asset. I really enjoy helping clients to protect and maintain their brands. This can put them into a great position to flourish and grow.

Thailand and Indonesia have recently joined the Madrid Protocol system. The addition of these two new countries will mean that there are now 100 members of the Madrid Protocol, covering 116 countries.

What is the Madrid Protocol?

The Madrid Protocol is the main international system for the registration of trade marks in multiple territories around the world. The Madrid Protocol is administered by the World Intellectual Property Organisation (WIPO).

The Madrid Protocol allows trade mark owners who have an existing registration in one Madrid Protocol territory, to obtain an International Registration for their trade mark. An International Registration mirrors the protection that would result from a national registration.

Protection is extended to each Madrid Protocol territory that the applicant selects as a “designation”. Depending on the global reach of your brand, this could range from one or two designations all the way up to 116.

Advantages to obtaining an International Registration

The main advantage is efficiency. By applying for an International Registration, you can avoid the admin and bureaucracy of dealing with each national trade mark office. You’ll be filing one trade mark application, through one attorney.

It is beneficial for brand owners who use one consistent trade mark, in a number of different countries. For businesses that tweak or adapt their brand for different countries, it may be preferable to pursue individual registrations with national trade mark offices.

It is also likely that the filing costs will be lower and there can be significant additional savings after registration.

Addition of Thailand and Indonesia

Trade mark owners who wish to gain protection for their brands in Thailand or Indonesia can now file a new International application, based on their Australian trade mark and select Thailand and Indonesia as a designation.

If you already hold an International Registration for your trade mark, you will be able to add Thailand and Indonesia as a designation to your existing registration.

Trade mark owners in Thailand and Indonesia will also be able to use the Madrid Protocol to register their marks in all other Madrid Protocol countries, including Australia.

What’s next for Asia?

Hong Kong will be the next Asian territory to adopt the Madrid Protocol, although this is not expected to be until 2019 at the earliest.

Need to protect your brand at home and overseas?

Baxter IP is a full service trade mark attorney firm. We specialise in brand protection. So whether your brand is local, national or international – speak to us how about how you can protect it.