Protecting your trade mark overseas using the Madrid System
If you are looking to expand your business overseas, an important part of your strategy should be seeking trade mark protection in the countries where
you are doing business. There are two ways to protect your trade mark overseas:
- File an application directly to each country
- File an application using the Madrid System, via IP Australia.
What is the Madrid System
The Madrid System (Madrid) facilitates international registration of trade marks and is administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. It allows you to file for trade mark protection in up to 120 countries in one application.
Benefits of Madrid
Madrid aids cross-border protection by allowing you to designate multiple countries for trade mark protection via a single international application. This application can be filed in English, eliminating the need for the application to be translated into the local languages. Also, all the fees for the international application are paid to one organisation (WIPO) and in one currency (Swiss Francs).
This centralised filing provides additional benefits in maintaining your international registrations. You only need to make one request to make changes to, or renew your international registrations.
Finally, you can add other countries later (for a fee), as your business expands.
Filing an international application via Madrid
To use Madrid you will first need an Australian trade mark application or registration. Once you have this, you can use the Madrid system to copy your Australian application into overseas markets.
After obtaining an Australian trade mark application or registration, you can then file an international application with IP Australia nominating your desired countries. IP Australia will complete formalities checks and, once satisfied, will send the application to WIPO.
Once WIPO is satisfied that the international application meets their requirements, WIPO sends the application to each country that was nominated in the application.
Each of the nominated countries will then examine the application according to their national trade mark laws.
International applications via Madrid can be filed without legal representation. IP Australia recommends you consult with an IP 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.