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It’s no secret that marketers across the globe have long established that with quality products and services, it’s important for businesses to have their own distinct brand. This is because in a highly competitive market, you want your business to stand out.
Trade marks play a huge role in this, as a business’ trade mark can become one of the most recognisable things about their brand, along with their products and services.
A trade mark is usually registered locally. However, if your business conducts activities overseas, you may need to look into international trade marks.
In this article, we’ll take you through the process of searching for an international trade mark as well as getting one registered.
What Is A Trade Mark?
A trade mark is something that is unique and distinctive to the business registering it. Put simply, it’s a way of legally registering a form of IP so that you have exclusive ownership of it. If anyone tries to use There’s actually not much of a limit on what can constitute a trade mark. Phrases, symbols, logos, letters, colours, sounds and even smells have been trademarked before.
It’s all a matter of establishing the trade mark’s relevance to a business and making sure it’s not too descriptive.
Once a business has their trade mark registered, it means they own the legal rights to it.
How To Conduct An International Trademark Search
If you’re wondering what trade marks have been registered in which country, then you can always conduct an international trade mark search.
There are two ways to conduct an international trade mark search.
The first way to do so is through the Global Brand Database provided by the World Intellectual Property Organisation (WIPO).
WIPO is an agency of the United Nations that deals with global intellectual property matters, making it a pretty reliable source.
The global brand database provided by WIPO gives a rundown of all the trade marks that have been registered in countries that are party to the Madrid System.
The Madrid System
The Madrid system is the international trade mark system (it’s called the Madrid system due to being established in Madrid, Spain).
Therefore, while Global Brand Database is an expansive database, if you are checking for specific countries, make sure they are part of the Madrid system first.
If you are looking for trade marks in more than one country, then using the global brand database is likely to be the better suited method.
However, if you are simply searching for a trade mark in one country (or a country that is part of the Madrid system), then you can always look at the trade mark databases of that specific country.
How To Do A UK Trademark Search
Let’s say you want to see if a certain trade mark is registered in a particular country. In this case, it could be a bit simpler to search for the trade mark in that country’s internal systems, as opposed to using the WIPO database.
For example, when searching for a trade mark in the UK, you can always use the Trade Marks Journal from their Intellectual Property Office.
The Trade Marks Journal shows trade marks that have not only been registered in the UK but also registered in both UK and countries outside of the UK.
Furthermore, trade marks that have had their applications approved but are still in the process of opposition are also published in the journal. Therefore, if you notice a trade mark that you think shouldn’t be registered, you still have time to submit evidence to counter it.
Is My Australian Trademark Valid Overseas?
Unfortunately, no. If you have a trade mark that has been registered in Australia, then its protection is limited to Australia.
If you want your Australian trade mark to enjoy the same rights in countries outside of Australia, then you will need to get your trade mark registered internationally.
How To Apply For An International Trade Mark
As we saw in searching for a trade mark, there are two ways to apply for an international trade mark.
- Doing an application through the Madrid System
- Applying at the local intellectual property offices (or the equivalent) of each individual country you are interested in
The path you decide to take will really depend on your business goals and the options you have in front of you.
Applying for an international trade mark (no matter the path you take) can be a lengthy and sometimes costly process. We recommend talking to a legal expert to submit an application to get some guidance on which path is best for your business and guidance on how to move forward.
Contact us today for a consultation on international trade marks.
How To Register An International Trade Mark
Once you have made the decision to go ahead with registering an international trade mark, then you’ll need to determine which registration process is best for you. That is, either registering with the Madrid System or making an application directly to the country of your choice.
If you resolve to do an application with the individual country you are interested in, make sure you thoroughly research their rules and regulations. After you’re familiar with what to do, go ahead and submit your application. If it all goes well and your application is approved, your trade mark will be registered and enjoy legal protection in that country as well.
If you decide to use the Madrid System, be sure to check the countries you are interested in are part of the Madrid system. Currently, 128 countries are members, so there’s a good chance your selected nations will be there.
Once again, the Madrid system is likely to be the more effective means of registering your trade mark in multiple international jurisdictions as there is simply one application as well as fee.
It’s important to keep in mind that if you are choosing to go by the Madrid system, even though there is one fee and one application, the ultimate result is multiple applications for your trade mark in each individual country. Therefore, your application could return successful in some countries and in others, not so much.
If you are considering registering your trade mark internationally, then it’s great to have a legal professional that specialises in intellectual property helping you out. Talk to us today regarding your international trade mark registration. .
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International trade marks can offer your business added security outside of Australia, so be sure to get the right help and advice along the way! To summarise what we’ve discussed:
- A trade mark is something distinctive used to uniquely identify a business like a logo or sound
- An international trade mark search can be conducted by either using the global brand database or looking up the trade mark in the each individual country’s internal systems
- Australian trade marks are not valid overseas
- To get your trade mark registered overseas, you will either need to use the Madrid system or apply directly to that country
If you would like a consultation on an international trade mark, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no-obligations chat.
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