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Filing an international trademark - direct or through WIPO? Pros and cons

Updated: Mar 13

Whether you file an international trademark directly in each country or through the World Intellectual Property Organisation (WIPO), each option has potential benefits and downsides.


A decision about how, where and when to file an international trademark should be part of your overall international trademark strategy.


The best trademark strategy for your business will ultimately depend on your business' specific circumstances. If you need help with international trademark strategy, make sure you get the right advice for your situation.


Once you're across some of the pros and cons of the two international trademark filing options, check out our guide on how to file an international trademark.


Not sure if you need an international trademark? Read our guide for more information on whether you need an international trademark.



A globe of the world
There are pros and cons to both filing an international trademark directly in each country or filing through WIPO.

How to file an international trademark


There are two ways to file an international trademark. You can either file your international trademark directly in each country or through WIPO.


Each options has pros and cons.


For more information on how to file directly or through WIPO, check out our guide on how to file your international trademark.


Filing an international trademark directly


The benefits of filing an international trademark directly


Filing an international trademark directly can be more cost effective


If you are only looking to file an international trademark in one or two other countries, filing directly can be more cost effective as you won’t have to pay a fee to WIPO (explained further below). 


You might benefit from overseas trademark advice when filing an international trademark directly


You may benefit from the advice of an overseas trademark lawyer prior to filing your international trademark in that country.


A trademark lawyer in that country can:

  • advise you on their country's filing requirements.

  • conduct searches for identical or similar trademarks that may cause issues when you file your international trademark or might ultimately mean your international trademark is not accepted;

  • give you advice on the goods and services descriptions of your international trademark; and

  • in certain situations, may draft or tweak the descriptions of your international trademark application to be more appropriate for that country. 


Downsides of filing an international trademark directly


Filing an international trademark directly can be more expensive


This option can be expensive as you pay professional fees to your overseas trademark lawyer on top of the applicable overseas IP office application fees. 


Filing your international trademark directly in each country is generally only more cost effective than filing your international trademark through WIPO if you are filing in one or two jurisdictions.


You might experience a language barrier when filing an international trademark directly


You may need to file an international trademark in a country that does not speak English as their first language.


This often means that the initial application, documents and other correspondence for your international trademark will need to be translated, which can further increase costs.



A government building with a clear blue sky in the background
The main benefits of filing your international trademark through WIPO is that it can save you time, effort and money.


Filing an international trademark through WIPO


Benefits of filing an international trademark through WIPO


The main benefits of filing your international trademark through WIPO is that it can save you time, effort and money. 


An international trademark application filed through WIPO is known as a Madrid application.


Filing an international trademark through WIPO is a streamlined process


WIPO acts as a central administrator for international trademarks, which leads to a streamlined international trademark application and international trademark registration process.


This can save time and increase efficiency. You can apply for your international trademark in a large number of countries through the one application, rather than you (or your Australian trademark lawyer) finding and managing a large number of overseas trademark lawyers and corresponding with each of them separately on separate direct filings. 


If you wish to file your international trademark in more countries in the future, adding additional countries to your Madrid application is easy and is known as a “subsequent designation” application. 


The renewal process for international trademarks is also streamlined through WIPO. You can renew your international trademarks in one central place, rather than directly through each overseas IP office (again saving you time and money). 


Filing an international trademark through WIPO may save costs


Filing an international trademark application through WIPO may also help you save costs.


There is a one-off international trademark application fee that you must pay to WIPO in order to file the international application. This is known as the WIPO fee. As well as this, there is an individual fee payable to each country in which you file your international trademark.


However, the cost for filing in each individual country through WIPO is relatively low (though it varies significantly from country to country).


The primary way you save money if you file your international trademark through WIPO is by avoiding the need to pay an overseas trademark lawyer in each country just to file the application.


If you make a subsequent designation application at a later date, you will be required to pay WIPO an additional fee, as well as pay a fee for filing in each subsequent designation country. 


When you file an international trademark though WIPO you have the ability to nominate English as your preferred language


When you file an international trademark application through WIPO you can make the international trademark application in English and nominate English as your preferred language.


You do not need to pay for documents or correspondence relating to your international trademark to be translated to and from the national language of the designated countries.


Equivalent protection is granted when filing an international trademark through WIPO


If your international trademark application is ultimately successful, your international trademark is registered in that country as if you had applied directly.


In other words, you receive the same protection if you register your international trademark through WIPO that you would have if you’d registered your international trademark by filing it directly in a country. 


It depends on your specific circumstances, but generally if you intend to file your international trademark in say more than three or four countries, filing your international trademark through WIPO is the way to go. 



Downsides of filing an international trademark through WIPO


The downsides to filing your international trademark through WIPO is that it can take longer than if you were to file directly.


It can also be more expensive if you are only filing your international trademark in a very small number of countries.


And you may need to engage an overseas trademark lawyer in any event if issues arise with your international trademark application that require overseas trademark expertise.


You may experience time delays when filing an international trademark through WIPO


Generally an international trademark application filed through WIPO will take longer to process, as the international trademark first has to be filed with and certified by IP Australia (if you are in Australia, or the relevant originating office if you are overseas).


From there your international trademark application is sent to WIPO for certification, and then sent to each designated country.


This process can take a number of months and is generally longer than the time it takes to file and register your international trademark directly. 


However, if you file your international trademark with WIPO within 6 months of filing your original Australian trademark application (or the equivalent original trademark application if your are overseas), protection of your international trademark will be backdated to the date of your original Australian trademark application (or equivalent original overseas application).


It may be more expensive to file an international trademark through WIPO if you only file in one or two countries


If you are only applying in one or two countries, it may be less expensive to file your international trademark directly in those countries, as you won’t be required to pay fees to WIPO as well as filing fees in each individual jurisdiction. 


However, if you plan on filing your international trademark in additional countries at a future date (if for example, your business grows and you expand into more countries), then this should be taken into account.


In this case it may be easier and less expensive to file your international trademark through WIPO and then add subsequent designations to the application later on. 


You may be required to engage overseas trademark lawyers when filing an international trademark through WIPO


Even if you file your international trademark through WIPO, you may be required to engage overseas trademark lawyers if there are issues with your international trademark application. 


Even though WIPO acts as a central administrator, WIPO still sends your international trademark application to the relevant country’s IP office for review. This review is based on the overseas laws of each designated country and the overseas IP office may raise issues with your international trademark at this stage. 


It is common to receive full or partial refusals of your international trademark based on formalities and overseas laws and practice. Some jurisdictions allow you (or your local Australian trademark lawyer) to deal with these yourself through WIPO, but others require you to engage an overseas trademark lawyer to overcome the issues.


For example, you can apply for an international trademark in the US through WIPO. However, if there are issues with your international trademark that you need to address, you must hire a US trademark lawyer to act on your behalf. 


International trademarks are dependent on a basic trademark application when filing through WIPO


Your international trademark application is dependent on your Australian trademark application (or the equivalent original trademark application if your are overseas) for a period of 5 years.


This means that if your Australian trademark application (or equivalent overseas trademark application) is successfully opposed or isn’t registered, you may lose your international trademark in the overseas jurisdictions you designated through WIPO. 


For this reason, it is usually a good idea to be certain your Australian trademark application (or equivalent overseas trademark application) will be registered prior to filing your international trademark through WIPO.  


Some countries are not a party to the Madrid Protocol


If the country in which you want to apply for your international trademark isn’t a party to the Madrid Protocol, you may have no choice but to apply for your trademark through a direct application. 


For more information check out our our guide on how to file your international trademark.


Still not sure whether how you should file your international trademark after reading through the pros and cons of each option? Contact us today to get help with your international trademark strategy.


Need help with your international trademark?


Filing an international trademark can be complicated and it may be difficult to work out which option is best for you. At Markster we make the process of filing an international trademark easy. Please feel free to get in touch.



If you need help with your trademark or have a trademark 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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