Is your brand protected internationally?


2 min read

Australian brand owners looking to protect their trademarks internationally must understand the territorial nature of trademark rights. Trademarks registered in Australia are not automatically protected in other countries, which could be a significant oversight for businesses with current or planned overseas operations. This includes exporting goods, forming international partnerships, or expanding into foreign markets. Regular review and updating of trademark rights are crucial as a business grows internationally.

The Madrid Protocol (MP) offers a streamlined solution for international trademark protection. Managed by the World Intellectual Property Organization, the MP includes 91 contracting parties, including regions like the European Union. It allows trademark owners to file a single International Application in English, covering multiple jurisdictions, based on an Australian application or registration. This method simplifies the process and can be more cost-effective than filing individual applications in each country.

However, there are nuances to consider. The Madrid Protocol is not all-encompassing; only some countries are party to it, and businesses may need to pursue national applications in non-member countries like Canada. Additionally, an International Registration (IR) under the MP depends on the Australian registration for the first five years. Any changes to the Australian registration in this period, such as opposition or cancellation, can impact the IR.

Despite these caveats, the MP provides a practical and efficient way to manage and expand a brand’s international footprint. Businesses should assess their current and future international trademark needs and consider whether the Madrid Protocol aligns with their global strategy. Regular reviews of existing IRs are also advised to ensure they align with changing business goals and market expansions.