How to file an international trade mark

Filing an international trade mark involves either applying directly in each country through local lawyers, or using the Madrid Protocol to file centrally through WIPO. Most Australian businesses expanding overseas will use a combination of both approaches, depending on the number of countries, budget and strategic priorities.

This guide covers the key steps and considerations. For help deciding whether you need international protection, read our guide on whether you need an international trade mark.

Ready to get started? Estimate your costs with our fee calculator, or contact us to discuss your strategy.

Two ways to file an international trade mark

There are two paths to securing trade mark rights overseas: filing directly in each country, or filing through WIPO's Madrid system. The right choice depends on how many countries you need, your budget, and your timeline.

For a detailed comparison of both approaches, see our guide on the pros and cons of filing directly vs through WIPO.

Direct filing

With direct filing, you (or your Australian trade mark lawyer) engage a local lawyer in each overseas country. That lawyer files the application directly with the country's IP office.

Direct filing is generally better when:

• You are filing in only one or two countries
• The country is not a party to the Madrid Protocol
• You want local legal advice before filing
• You need the fastest possible filing timeline

Filing through the Madrid Protocol (WIPO)

The Madrid Protocol is an international treaty that allows you to file a single application through WIPO and designate the countries where you want protection. Over 130 countries are parties to the Madrid Protocol, including Australia, the United States, the United Kingdom, the European Union, Japan, China and New Zealand.

The Madrid system is generally better when:

• You are filing in three or more countries
• You want centralised management and renewal of your trade marks
• You want to reduce costs by avoiding local lawyer fees for the initial filing
• You may want to add more countries in the future (via subsequent designations)

How it works:

1. You must first have a trade mark application or registration in Australia (your "basic mark")
2. You file an international application through IP Australia or directly with WIPO
3. WIPO reviews and registers the international mark
4. WIPO forwards the application to each designated country for local examination
5. Each country examines the mark under its own laws and may accept or refuse it

Important: Your international registration depends on your basic Australian mark for the first five years. If your Australian mark is cancelled or refused during that period, you could lose your international registrations too.

Key considerations

Where to file

Focus on countries where you currently use or plan to use your mark. Filing in countries where you have no real business presence is generally a waste of money, as many jurisdictions can cancel marks for non-use after three to five years.

Key factors to consider include where you sell, where your products are manufactured, where your competitors operate, and where counterfeiting or infringement is most likely.

For a detailed breakdown, read our guide on where to file your international trade mark.

Costs

International trade mark costs vary significantly depending on the countries you choose and whether you file directly or through the Madrid system. Typical costs include:

• Government filing fees (vary by country)
• WIPO fees (if using the Madrid system)
• Local lawyer fees (if filing directly, or if issues arise during examination)
• Translation costs (for direct filings in non-English-speaking countries)

As a rough guide, Madrid filings tend to be more cost-effective when covering three or more countries, while direct filing can be cheaper for one or two countries.

For country-specific cost information, see our cost guides:

• Cost to file a US trade mark
• Cost to file a UK trade mark
• Cost to file a trade mark in Europe
• Cost to file a NZ trade mark
• Cost to file a trade mark in China
• Cost to file a trade mark in the UAE

You can also use our international fee calculator for an instant estimate.

Timing

Timing matters for international trade mark filings:

• Priority period: If you file internationally within six months of your Australian trade mark application, you can claim priority. This means your international filing will be treated as if it was filed on the same date as your Australian application, which can be critical if someone else files a similar mark in the meantime.
• Madrid processing time: Filing through WIPO adds processing time as the application passes through IP Australia, then WIPO, then each designated country. This can take several months longer than a direct filing.
• Examination timelines: Each country has its own examination timeline. Some countries (like Australia and New Zealand) are relatively fast, while others (like Brazil and India) can take years.

Local requirements

Each country has its own trade mark laws and examination practices. Some key differences include:

• Evidence of use: The US and the Philippines require you to submit proof that you are actually using your mark after registration
• Nice Classification variations: While most countries use the Nice Classification system, the way goods and services descriptions are accepted can differ
• Representation requirements: Some countries require you to appoint a local lawyer or agent, even if you filed through WIPO

Jurisdiction guides

We have detailed guides for the most popular filing destinations:

• Register a trade mark in the United States
• Register a trade mark in the United Kingdom
• Register a trade mark in New Zealand
• Register a trade mark in the European Union

Decision guides

Not sure where to start? These guides will help you work through the key decisions:

• Do I need an international trade mark? — When international filing makes sense and the risks of not filing
• Where should I file my international trade mark? — How to prioritise markets and choose the right countries
• Direct filing vs WIPO: pros and cons — A detailed comparison to help you choose the right filing method

Frequently asked questions

Can I file an international trade mark myself?

Technically, yes. However, international trade mark filing involves navigating different legal systems, and mistakes can be costly. Most businesses benefit from working with a trade mark lawyer who can coordinate the process and advise on strategy.

How long does an international trade mark last?

A Madrid registration lasts 10 years and can be renewed indefinitely through WIPO. Direct filings follow the renewal rules of each individual country, which is typically also 10 years.

What happens if my international application is refused in one country?

If a designated country refuses your mark, it does not affect your registrations in other countries. You may need to engage a local lawyer to respond to the refusal in that specific country.

Do I need an Australian trade mark first?

To use the Madrid system, yes — you need an Australian trade mark application or registration as your basic mark. For direct filings, you do not need an Australian mark first, though having one is generally advisable.

Next steps

International trade mark filing can be straightforward with the right guidance. At Markster, we help Australian businesses protect their brands overseas through both the Madrid system and direct filings.

• Estimate your international filing costs
• Start your international application
• Get strategic advice on your international trade mark portfolio

If you need help with your brand or have a trade mark issue, contact us today.

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.