Clifford Gouldson Lawyers

Exporting to the Asia-Pacific region? Trade mark protection just got easier

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If you are exporting overseas, trade mark protection can seem like a daunting prospect – particularly in non-English speaking countries.
However, Australian businesses can access international trade mark registration through the Madrid Protocol (an international treaty governing trade marks). The Madrid Protocol allows Australian trade mark applicants and registrants to seek trade mark protection in up to 100 countries worldwide, all through a single English-language portal.

Applications are then assessed by local trade mark registries, and if registered they are treated with the same legal weight as a local trade mark. Fees are levied on a per country basis, and are comparable to the cost of applying in Australia (and much cheaper than engaging local trade mark attorneys).
Applicants can apply for protection in many key Asia-Pacific jurisdictions, such as China, Japan, South Korea, Vietnam, the Philippines, New Zealand and Singapore. Until recently however, Indonesia and Thailand were not parties to the relevant treaty. In the next few months, this will change – Thailand will join the Madrid Union on 7 November 2017, and Indonesia will become a Madrid Union member on 2 January 2018.

This means that Australian businesses can soon seek trade mark protection in these lucrative export markets. At this stage, the only major hold out in the Asia-Pacific region is Malaysia – though there are hopes it will join in the next year or two.
There has never been a better time to seek trade mark protection in the Asia-Pacific region!
Benefits of Madrid Protocol Application:

  • One English application to access up to one hundred jurisdictions
  • Reasonable application fees, levied on a per country basis
  • No need to establish a postal address for service in that jurisdiction
  • One Australian point of contact for correspondence and renewals in the future
  • Cost effective and allows Australian legal counsel to control the process for you
  • If one application fails, the others will remain on foot
  • Additional countries can be “tacked-on” in the future if needed, with normal application fees applying
  • If your base Australian application was filed in the last six months, your foreign Madrid Protocol applications can be backdated to the Australian filing date

Points to Remember:

  • Registry fees for each individual country still need to be paid for the application, and possibly also registration.
  • If there are issues with an application, local agents may need to be engaged to give advice on prospects and assist in obtaining registration.  However, this will only occur if there is an objection to registration, and your Australian counsel can manage this process for you.

Would you like to explore trade mark protection in your Asia-Pacific markets, or other major markets such as the European Union, United States and India? Contact our Intellectual Property team to discuss your foreign trade mark options. 

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