Getting your goods and services right in an international trade mark application

13.09.2019 IP Australia

If you are looking to expand your business internationally, using the Madrid System (Madrid) can be an efficient way to protect your trade mark overseas. The list of goods and services is an important part of any international application filed under Madrid.

An international application must be based on a national (domestic) application or registration. So, you will first need an Australian trade mark application or registration. The list of goods and services in your Australian application or registration will form the basis of the list in your international application.

Most members of Madrid, including Australia, use the NICE classification system (international classification system) to classify goods and services. But each country interprets classification based on its own national laws. For example, a list of goods and services that is acceptable in Australia might not be acceptable in the United States or China; both which have more specific requirements than Australia.

One of the advantages of filing an international application via Madrid is that you can tailor (limit) the list of goods and services to each country you nominate. An international application has a main list of goods and services based on your initial domestic application/ registration, but the list of goods and services does not have to be identical for each country. You can choose to limit the list for a specific country to ensure you meet that country’s classification requirements. This limited list of goods and services must be covered by the goods and services in the main list.

A tool that you can use to help you tailor your list of goods and services is the Madrid Goods and Services Manager (MGS). MGS will show you if your list will be acceptable to World Intellectual Property Organization (WIPO). It also allows you to check if the goods and services will be accepted in up to 35 member countries, including Australia’s key trading partners such as the United States, China, Japan, Korea and Singapore.

International applications are filed via IP Australia using the Madrid e-filing service. The details of your national application or registration are automatically populated in your international application and MGS can be used from within this Madrid e-filing service.

International applications via Madrid can be filed without legal representation. However, we recommend you consult with an intellectual property professional before filing, as they can guide you on the best strategy for your business.

If you would like to know more about Madrid, visit IP Australia’s international trade mark webpage.


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