One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Filing a Madrid Protocol application
Before filing an International trade mark application
Whilst there is no such thing as a worldwide trade mark per se, the World Intellectual Property Organization (WIPO) provides the Madrid Protocol system for applicants to pursue protection in multiple countries more cost effectively.
Benefits of international trade mark registration
One of the greatest benefits of acquiring international trade mark registration for your mark is that you as the owner of an Australian trade mark can seek international trade mark protection by submitting a single application in the English language through the Madrid Protocol. This approach is easier and less expensive than filing multiple applications in each individual jurisdiction in which you seek trade mark protection. Moreover, amendments and renewals of international registrations can be implemented more cost effectively.
Another advantage of international trade mark registration is that once it is registered in the designated country, your trade mark is accorded the same protection as any trade mark that is nationally registered.
The Madrid Protocol offers a provision for designating in other countries after the initial submission and at a later date through subsequent designations.
Considerations before filing an International trade mark registration
Given the independent national trade mark systems of the members of the Madrid Protocol, you can still apply directly to these countries. This path to protection may be more advantageous depending on your business needs. Your trade mark attorney can help you identify the following considerations before filing an international trade mark:
- Are the countries you intend to apply for a trade mark members of the Madrid Protocol?
- Are you eligible to file an international application under the Madrid Protocol?
- What is the scope of your Australian trade mark, such as the goods and/or services you wish to be protected overseas?
Your trade mark attorney can perform a trade mark pre-filing search to include different databases that may show where a similar mark has been used in your countries of interest. These searches can help identify which of the countries may present a potential conflict. In addition, they can help in determining whether your trade mark is likely or not to be registrable in the countries of interest due to possible cultural or legal restrictions.