International Trade Mark Registration
If you are thinking of expanding your business to international markets, then one of the first steps to take is apply for an international trademark registration. To do this you will need to develop a suitable brand or logo that best suits your products or services in the target country before submitting your international trade mark registration application.
The World Intellectual Property Organisation, or WIPO, administers international trade mark registrations. WIPO trademark search resources are also an important tool to use when assessing the likelihood of success in getting an international trade mark registration for your mark.
Securing an international trade mark registration can provide significant benefits if you are planning to market products overseas and if you plan to manufacture your product overseas and then import that final product back to Australia.
First rights to international trade mark registration
Because countries have different rules governing ownership of trade marks, it is important to apply for international trade mark registration before you begin to market your product or service overseas.
Many countries only recognise legal rights over a trade mark based on first to file or register the mark and not first to use. As an example, in China, ownership rights are only provided to those who are first to apply for trade mark registration. Unlike trade mark laws in Australia, prior use of a mark does not provide a right of protection over use of the mark in China. In Japan, unless your mark already has an international reputation, first rights are also provided to those who first apply for trade mark registration.
Other countries that provide rights based in first to file and not first to use a trade mark include, France, Brazil, Colombia, Indonesia, Italy, Saudi Arabia, Spain, Taiwan.
There are some important steps to take before lodging an application for an international trade mark registration of your brand or existing Australian trade mark. Some key initial steps include:
Step 1: Determine if your mark best suits your business in the desired country
Often a brand used in one country may not be suitable for creating brand awareness or loyalty in another country. In countries like China, where there is a distinctive culture, there is often a need for localisation or Chinese brand naming of products. Localisation of a brand does not mean simple translation into the local language but assessing the meaning of the entire brand to local consumers.
Step 2: Understand the services or goods your mark will be used for
To assist in standardising the classification of goods and services that a trade mark may be registered, the International Nice Classification system was established. WIPO trademark search facilities is based on the Nice Classification system. While many countries recognise the Nice Classification system, some countries have their own variations to the classification system that suits their local needs. So it is vital to reassess the classification of your mark when applying to individual countries.
In China, there is an added complication due to a sub-classification system. This can mean that filing for the usual list of goods and services in China may not provide a trade mark owner with adequate protection. Whilst China broadly follows the Nice Classification system, and Chinese marks may be found through a WIPO trademark search, brand owners should be aware that under local practice, goods and services are further broken down into sub categories within each class.
Step 3: Trade mark search – does your mark conflict with existing registered marks
To promote your brand in an international market, it is important to complete an international trade mark search. Unlike Australia, many countries do not assess trade mark applications against existing registered marks. In these countries it is up to the owners of the existing marks to oppose registration of any new application that may be the same or similar to their own mark.
Such searches may be completed at two levels. Initial assessment for international marks may be made through the WIPO trademark search or Madrid International Trademark System. However, for effective assessment of the risks to trade mark registration, a trade mark search should to be completed specific to the countries where the mark will be used. Before completing an international search, the meaning of a trade mark and, if relevant, its translation into a local language may be required.
International Lodgement Process
Once you have completed these key initial steps, you may continue with your international trade mark application. There are two key methods to secure a registered trade mark internationally. There is always the option to file a trade mark application directly in the desired country or region.
Alternatively a Madrid Protocol trade mark application (international trade mark application) may be filed designating one or more countries party to the Madrid Protocol. When making a Madrid application it must be based on an existing Australian trade mark application or registration, known as the “basic trade mark”.
If you are targeting key countries in Europe, the option also exists to lodge a European Community Trademark Application. This can be completed by a registered trade mark attorney of a EU country. A Community application can save you time and money and covers all the countries of the European Community.
Recognition for your Australian Application
If you want to have the date of your Australian trade mark application recognised internationally you should apply for international registration within 6 months of the date the application made in Australia. Countries that are party to the Paris Convention must grant priority status (recognition) to trade mark applications made in Australia or other member countries provided the international application is filed within six months after the date of the earliest application.
There are 176 countries that recognise the Paris Convention. This includes China, Japan, France and most other countries that provide legal rights to trade marks based in first to file.
To claim priority of your Australian application, any international application must be in the same class of goods or services as the initial application. If your want to vary the classification of goods or services, a new application would need to be filed in Australia first.
Use of your Mark Internationally
When you file your mark internationally, you should have clear intentions to use the mark in that country. Any international trade mark is vulnerable to opposition and removal if it is not used. Most countries provide the opportunity for others to request that a mark be removed from registration if it has not been used for a set period from the date of registration. The period in which use must occur varies by country but is normally 3 to 5 years.
In the USA you are required to file a Statement of Use between the fifth and sixth year from the date of registration. If you continue using your mark after registration, you will be able to maintain your registration for as long as you continue to use the mark in commerce.
Period of Registration
Registration in most countries is recognised for a period of 10 year from date of application in a specific country or the date of the first application if claiming priority through the Paris Convention. Renewal of the application can secure protection for a further 10 years period.
Costs for International Registration
The costs for internal registration varies for each country. The cost of a Madrid application will depend on the number of countries selected for registration. If you select a small number of countries, it may often be less expensive in the long term to apply to each country individually, via a registered trade mark attorney, rather than through the Madrid application.
If you are planning to expand your business internationally, conducting a WIPO International Trademark Search can be a good place to begin formulating your brand strategy in your tarket country. It can also highlight any opposition you may face in launching your brand overseas. Talk to us today about international searches.