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How to file an international trademark

Updated: Apr 8

If you are looking to expand your business overseas and want to ensure your brand is protected, you might be considering whether to register an international trademark.

This article will step the filing process, but before you go ahead it's important to consider why you're thinking about protecting your rights overseas in the first place.

We briefly cover some considerations below, but you can also read our article on whether you need an international trademark.

Not sure which countries to cover? See our guide on what to consider when choosing where to file.

Managing international trademarks can be a complex undertaking, and we recommend that you use lawyers to help you with your strategy.

A girls points to a country on a globe
There are two main reasons you should file an international trademark. To protect your brand and protect yourself against trademark infringement.

Why you might need an international trademark

There are two primary reasons you should seek to register an international trademark:

It will ensure your brand is adequately protected overseas

Registering an international trademark can mean the difference between securing those rights in another country or missing out. 

This in turn can impact whether you are able to freely use your brand in that market. 

Generally you need protection in each country you provide or intend to provide goods and services under the mark (including if you provide your goods and services through a distributor or agent who will the mark). 

It helps to ensure you're not infringing another person's rights

If someone else has already registered a trade mark that is identical or similar to yours, using your trade mark in that market without your own registration could result in infringement. This means you might infringing someone else's rights. 

See our guide for more information on whether you need an international trademark.

If you're concerned about infringement, you should contact a lawyer for advice.

Filing options

There are two options for filing - you can apply directly in each country, or you can apply through WIPO.

Whether you go directly or through WIPO depends on a number of factors, including where and in how many countries you intend to register your mark.

If you need help with your strategy, you should contact a trade mark lawyer.

Filing directly in each country

You can file directly in each country in which you wish to protect your rights.

With this approach, you (or your local Australian trademark lawyer) would engage a local lawyer in each country, and they submit the request directly with the overseas IP office. 

Some countries are not party to the Madrid Protocol (more on this below) and many countries do not allow you to apply for or manage IP rights unless you are a lawyer that is licensed to practice there. 

For help to file internationally get in touch today.

Filing with WIPO

You can also file through the World Intellectual Property Organisation (WIPO), which is a centralised service to manage trade mark filing and management in multiple countries.

This is known as a Madrid application (more on this below).

Using the Madrid system allows you to choose each country in which you want to protect your brand.

You can also add countries to your international trademark in the future by applying for a "subsequent designation".

Government building with the EU flag flying above
The World Intellectual Property Office (WIPO), manages all international trade mark applications and international trademark registrations filed through a Madrid application.

The Madrid Protocol

The ability to file an international trademark is thanks to a system called the Madrid Protocol.

There are over 120 countries that are party to the Madrid Protocol, including Australia, the United Kingdom, the United States of America, the European Union, Japan and New Zealand. 

If a country is party to the Madrid Protocol it means you can apply to register a TM in that country through the Madrid system.

If a country is not a party to the Madrid Protocol, it unfortunately means your only choice is to file directly in that jurisdiction.

The World Intellectual Property Office (WIPO), manages all international trade marks filed through the Madrid Protocol. 

How the WIPO process works

During the filing process, you select each country, or group of countries that you want to file in.

WIPO then reviews your filing and checks whether it meets the legal requirements. If it does, your mark will be registered with WIPO.

From there, WIPO will send an application on your behalf to each designated country. 

WIPO then essentially acts as a central reporting and administration hub for the mark. 

Check this article out for more information on which countries to file an international trademark.

How to file using the Madrid system

To submit through the Madrid system, you must first have applied for or registered a trade mark in a Madrid country.

This forms the basis of your international application, and is called the basic application/registration.

Once you have a basic application or registration, an international trademark can be submitted directly with WIPO, or via the national IP office where your basic application was filed (such as IP Australia).

If your basic application or registration is invalidated or removed for any reason, WIPO will require you to nominate a new basic application/registration. If you can't do so, it will jeopardise your Madrid application, and it might be cancelled.

There are also a number of other criteria you must meet, which can vary from country to country.

Not sure if you should go directly or through WIPO? Read our guide on the pros and cons of each option.

Or contact us today to get streamlined, personalised help.

Need help?

This process can be complicated, and it may be difficult to work out which option is best for you. At Markster we simplify the process for you. Please feel free to get in touch.

If you're interested in more helpful information, sign up to our trademark tips newsletter.

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.


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