Do I need an international trade mark?

If you are currently using or plan to use your brand in another country, you should strongly consider registering a trade mark there. Trade mark rights are territorial — an Australian registration only protects you in Australia. Without a registration in each overseas market, you have limited legal rights and could be at risk of infringement by others or, worse, infringing someone else's existing rights.

The earlier you secure international protection, the better your position. If you are ready to move forward, read our guide on how to file an international trade mark.

Want to discuss your situation? Contact us for tailored strategic advice.

When does international filing make sense?

Not every business needs international trade mark protection. It makes sense when one or more of the following applies:

You sell or plan to sell overseas

If you sell goods or services in another country — whether directly, through a distributor, via an online store, or through a platform like Amazon — you should have trade mark protection in that market. This applies even if your business is based entirely in Australia and you simply ship products overseas.

You manufacture overseas

If your products are manufactured in another country (for example, China), registering your trade mark there can prevent a manufacturer or third party from registering your brand and holding you to ransom. This is particularly important in "first to file" jurisdictions, where whoever files first owns the mark regardless of who used it first.

You have competitors in other markets

If competitors operate in markets you plan to enter, filing early prevents them (or opportunistic third parties) from registering a mark that is identical or similar to yours. Once someone else owns a registration, displacing them can be expensive and time-consuming.

You are building a global brand

Even if you are not yet selling internationally, if your long-term strategy involves overseas expansion, filing early — especially during priority periods — can be a cost-effective way to secure your position.

The risks of not filing internationally

Choosing not to file internationally is not a neutral decision. There are real risks.

Someone else could register your mark

In most countries, trade mark rights go to the first person to file — not the first person to use the mark. Australia is somewhat unusual in recognising prior use rights. In many overseas jurisdictions, if someone else registers your brand name before you do, they own the rights, and you may be unable to use your own brand in that market.

A well-known example: the first Burger King franchise in Australia could not use the name "Burger King" due to an earlier local registration. The franchise had to rebrand as "Hungry Jack's" in Australia.

You could infringe someone else's rights

Using a brand overseas without checking the register and obtaining your own registration means you might be infringing an existing trade mark. This can lead to cease and desist letters, legal proceedings, and the need to rebrand in that market — all of which are far more expensive than filing a trade mark in the first place.

You lose negotiating power

Without a registration, you have limited ability to enforce your rights, negotiate licensing deals, or take action against counterfeiters and infringers in that jurisdiction.

Costs escalate over time

If you wait too long and someone else files first, the cost of resolving the situation — through opposition proceedings, negotiations, or litigation — is almost always significantly higher than the cost of filing proactively.

Timing considerations

The six-month priority period

If you have filed a trade mark application in Australia (or another Paris Convention or Madrid Protocol country), you have a six-month window to file in other countries and claim "priority." This means your overseas application will be treated as if it were filed on the same date as your original application.

This is extremely valuable. If a competitor files a similar mark overseas during that six-month window, your priority claim means your application takes precedence.

If you have recently filed an Australian trade mark, the clock is ticking. Contact us to discuss your international filing options before the priority period expires.

First-to-file jurisdictions

Many major markets — including China, the EU, Japan and most of Southeast Asia — are "first to file" jurisdictions. In these countries, the first person to file a trade mark application owns the rights, regardless of who was using the mark first. Delaying your filing in these markets is particularly risky.

Use requirements and maintenance

Some countries require you to prove you are using your mark within a set period after registration (for example, the US requires a declaration of use between the fifth and sixth year). If you file too early and cannot demonstrate use, you may lose your registration.

This means timing your filing to align with your actual or planned market entry is important. Filing too early can be as problematic as filing too late.

What should you do next?

If any of the scenarios above apply to your business, we recommend the following steps:

1. Assess your markets. Identify the countries where you currently operate or plan to expand. Our guide on where to file your international trade mark can help.
2. Choose your filing method. Decide whether to file directly or through the Madrid Protocol. See our comparison of direct filing vs WIPO.
3. Understand the costs. Use our international fee calculator to estimate your filing costs.
4. Get strategic advice. An international trade mark strategy will help you prioritise and avoid costly mistakes.

Frequently asked questions

Do I need a separate trade mark in every country?

Yes. Trade mark rights are territorial, so you need a registration in each country (or region, such as the EU) where you want protection. An Australian registration does not give you rights in any other country.

Can I rely on my Australian trade mark to protect me overseas?

No. An Australian trade mark only gives you rights in Australia. To enforce your brand in another country, you need a registration there.

What if I only sell online — do I still need international protection?

If customers in other countries can purchase your goods or services (even through a website or online marketplace), you are arguably using your mark in those countries and could benefit from registration. You could also be at risk of infringing existing marks in those jurisdictions.

Is it worth filing if I am not using the mark overseas yet?

It can be, especially in first-to-file countries where someone else could register your mark before you enter the market. However, be mindful of use requirements — some countries will cancel marks that are not used within a certain period.

How much does it cost?

Costs vary significantly by country and filing method. See our international fee calculator for an instant estimate, or read our hub guide on international filing for links to country-specific cost guides.

Need help deciding?

At Markster, we help Australian businesses work out whether and where they need international trade mark protection. We can advise on timing, priority claims, and the most cost-effective filing strategy for your situation.

• Contact us for strategic advice
• Estimate your filing costs with our fee calculator
• Read our full guide to filing an international trade mark

Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.