Businesses need to protect their brands and intellectual property in their country of origin – and abroad. A trademark registration assigns ownership of a business name, logos, slogans and other unique features of your company. It protects against any ownership infringements.
With many companies taking advantage of the access to global reach that the Internet has afforded them, or are now trading online in other countries, protecting their brand overseas has come into focus. These companies need to ensure their brand’s rights extend beyond Australia.
You will automatically get some protection when you lodge a mark in Australia, but it’s not sufficient to prevent another entity using your intellectual property in another country. If you don’t have the adequate protection or rights in the markets you are trading in others can legally use that same mark.
If you register your trademark in Australia, you can file a single application with The World Intellectual Property Organisation (WIPO), under their International Trademark Registration facility. This allows you international registration under what is called the Madrid Protocol. It has a membership of over 95 countries. The protocol recognises that if you’re using a trademark globally via the Internet, it automatically places you as a trader in an international market.
You are covered if you’ve nominated the countries (also members of WIPO) in which you want to trade. A trademark professional can guide you in this process. Each appointed state conducts research and will respond with its result to the WIPO head office.
If you’re selling your services in another country using an online platform, you could receive a letter of complaint from another trader in that territory implying that you’re infringing on their mark rights. You may inadvertently be encroaching on their intellectual property if you don’t adhere to the regulations in the WIPO protocol.
You’ll need professional guidance when an international rights holder contacts you, and you’ll need to rectify the alleged infringements immediately. This could be something as simple as amending your contact details on your website to prove you don’t deliver products in that country. You may need to update wording to clarify that you’re not affiliated with that rights holder.
If you rectify the issue, the trader will have limits to the damages they can collect. If you ignore their allegations, they may have the right to claim damages. It’s unlikely you’ll have infringed in other situation if you’ve acquired a trademark ‘in good faith’ and have provided detailed contact information.
It’s advisable as a new business owner to first register your mark in Australia and then the countries you intend to trade in or promote your brand. It’s unnecessary to apply to every state; focus on those that are relevant to your product or target market.
You need a trademark professional to guide you about potential pitfalls too. In Australia, for example, if you register a trademark and then don’t use it, there is a system in place that allows your mark to be removed. Most territories have a similar clause in operation. For example, the USA requires traders to prove they are still using the mark continuously to retain ownership.
An important factor to note is the day you file your application to register your mark in Australia. This is called a ‘priority date,’ and it’s automatically recognised in other countries you apply for a trademark in. It covers a period of six months from the date you file. The benefit of this is that you’re covered for half a year by your original mark registration, giving you time to assess the viability of your product or service internationally before you pursue intellectual property protection outside of Australia.
An international trademark comes with government and professional fees and can be complicated and expensive depending on the country you’re applying it and the options you adopt. Costs will vary according to:
- The individual states you register your trademark in. Different countries charge different amounts.
- The number of classes you feature in your trademark.
- The use of the Madrid Protocol system or if you choose to use each country’s trademark office instead.
- A need to hire a solicitor or a trademarks attorney in another country to deal with objections and other filing issues.
For more information about Australian trademarks visit www.mmwtrademarks.com.au.
