If your business is taking orders from overseas, talking to a distributor in another country, or planning to launch in a new market, a question comes up quickly: does your Australian trade mark protect you abroad?
The short answer is no. Trade mark rights are territorial. An Australian registration gives you rights in Australia, and only in Australia. Every other country runs its own registration system, and if a business there registers your brand before you do, it can stop you trading under your own name in that country.
That is not the whole story. A set of international agreements makes it easier to file in many countries at once, and gives you a short window after your Australian filing in which your early date counts everywhere. This article explains how that system fits together: what an Australian registration actually gives you, who the players are, the two routes to overseas protection, the priority deadline you should not miss, and where businesses usually get caught out.
What an Australian Trade Mark Actually Gives You
Under s 17 of the Trade Marks Act 1995 (Cth) (the Act), a trade mark is a sign used, or intended to be used, to distinguish your goods or services from someone else's. Registration gives the owner the exclusive rights to use the mark, and to authorise others to use it, in relation to the goods and services for which it is registered (s 20 of the Act). If someone uses a substantially identical or deceptively similar sign as a trade mark in Australia in relation to those goods or services, that is infringement under s 120, and you can enforce your rights in Australian courts.
The registration lasts ten years from its filing date and can be renewed (s 72 of the Act). Even without registration, a business that has built up goodwill in its brand can sue for passing off, but registration is much easier to enforce and does not depend on proving reputation.
None of these rights extend past Australia's borders. Use of your mark in another country is not use in Australia, so your Australian registration gives you no cause of action against it. If another business has registered your name there, your Australian registration does not stop them using it, and it does not stop them blocking you when you try to enter that market.
The result is a system in which protection is built country by country. To stop a trader in a particular country, you generally need enforceable rights in that country. Every strategy for protecting a brand overseas starts from that principle.
Who Does What in an International Filing
A handful of players are involved, and it helps to know which one does what:
- Your business: decides which markets matter and owns the mark. Decisions about who owns the brand, and in which entity, flow through everything else.
- IP Australia: examines Australian applications and acts as Australia's office of origin for the Madrid System, checking that international applications meet the requirements before forwarding them to WIPO.
- WIPO (the World Intellectual Property Organisation): administers the international filing systems. For the Madrid System it receives your application, checks the formalities, registers the mark internationally and notifies each country you nominated.
- Foreign IP offices: examine your application under their own law and decide whether to grant protection in their country. WIPO does not grant rights in any country; the national offices do.
- Trade mark attorneys and lawyers: run clearance searches, draft specifications of goods and services, respond to foreign examination issues and handle enforcement if a conflict arises.
Where disputes arise, they are resolved in the courts of the country where the rights exist. There is no international trade mark court, and no international police force for brands. If a dispute crosses borders, you may end up running proceedings in more than one country at once.
The Two Routes to Overseas Protection
If you want protection in another country, you have to file in that country, one way or another. There are two routes: direct applications, or the Madrid System.
Filing Directly in Each Country
The direct route means filing a separate application with each national or regional office. The European Union Intellectual Property Office, for example, accepts one application covering all EU member states. Direct filing is often necessary for countries outside the Madrid System, and it gives you full flexibility: you can use a different mark for a market, claim different goods and services, and deal directly with the local office. Many countries require a local agent, which adds cost, and the paperwork multiplies with every country you add.
Filing Through the Madrid System
The Madrid System, set up under the Madrid Protocol and administered by WIPO, lets you seek protection in more than 120 countries through one application filed through IP Australia. Australia is a member, along with most of your likely export markets. You are eligible if you are an Australian national, a resident of Australia, or have an industrial or commercial establishment here.
The mechanics work like this:
- You need an existing Australian application or registration to build on. This is the basic application or basic registration. The mark, the owner and the goods and services on the international application must match the Australian one.
- You file the international application through IP Australia's Madrid e-Filing service, nominating the member countries where you want protection.
- IP Australia checks the application, certifies it and forwards it to WIPO.
- WIPO examines the formalities, registers the mark in its international register and notifies each nominated country. Fees are paid to WIPO in Swiss francs, and the application can be filed in English.
- Each nominated country then examines the mark under its own law. Under the Madrid Protocol, designated offices have 12 or 18 months from notification to issue a provisional refusal, which works much like an adverse examination report in Australia. The country may refuse protection, or you may be able to respond, sometimes through a local agent.
- If protection is granted, you hold a bundle of national rights administered centrally. Changes, renewals and adding new countries, known as subsequent designations, can be handled through WIPO with a single request. The international registration runs for ten years, with one renewal date for all designated countries.
Two features of the Madrid System catch people out. First, the international registration depends on the basic application or registration for its first five years. If the Australian mark is refused, cancelled or successfully attacked within that period, for example in a non-use action, the international registration is cancelled too, unless you convert it into national applications in each country within three months of the cancellation. That process is called transformation, and it keeps your filing date alive in countries that would otherwise have been lost.
Second, the Madrid System does not create one global trade mark. It is a filing and administration system that produces separate national rights. WIPO registering your mark is not the same as being registered in each country you nominated. Each designated office still examines the mark and can refuse it, and each national registration must be managed under that country's law.
The Six-Month Priority Window
Because rights are territorial, the date you file in each country matters. That is what the Paris Convention, adopted in 1883 and administered by WIPO, addresses. It lets anyone who files a trade mark application in one member country claim the benefit of that filing date in every other member country, provided they file there within six months. In Australia this is given effect by s 29 of the Trade Marks Act 1995 (Cth).
Concretely, if you file in Australia today, any application you file in another Paris Convention country within the next six months is treated as if it had been filed today. Someone who files in between does not get ahead of you. The protection works in reverse too: a filing in another member country can give you priority for an Australian application, which matters if you have started with a foreign filing.
The Madrid System plugs into this. File your international application within six months of your Australian filing and you can claim the Australian date as the priority date for every country you designate. After six months the window closes, and anyone who filed in a target country in the meantime is ahead of you.
This window is why timing is a strategy in itself. The six months after your Australian filing is the cheapest protection you will ever have available, and preserving it costs nothing except filing on time.
Where the System Bites: Common Traps
The rules differ from country to country, and that is where Australian businesses get caught:
- First to file beats first to use: Many countries grant rights to whoever files first, regardless of who was using the mark before. A local business, or a squatter who monitors new registrations, can register your brand in that country and block your entry or demand payment to hand it over. Your Australian registration and prior use do not automatically override that. Some countries do give weight to prior use or reputation, but you generally have to prove it, in their system, not yours.
- Classes must match what you actually sell: Trade marks are registered in relation to classes of goods and services under the Nice classification, which has 45 classes: classes 1 to 34 cover goods and classes 35 to 45 cover services. Register in the wrong classes and your protection does not cover what you actually sell, and your product range in a new market may not match your Australian classes.
- A logo is not a name: If you register only your logo, you cannot stop someone using your brand name on its own. A word mark protects the name itself; a logo mark protects the graphic. Most businesses need both, and the Madrid System requires the international mark to match the Australian mark, so what you file here is what you can extend.
- Online reach creates exposure without a local presence: Advertising targeted at another country, shipping there, or listing on local marketplaces can put you in the sights of a local trade mark owner even if you have no office there. You can face takedowns or infringement claims in a market you have not yet entered.
- Well-known marks are a partial exception, not a plan: Some protection can exist for a mark that is genuinely well known in a country even without registration there. In practice, proving that reputation in someone else's system is harder and more expensive than simply filing first, so treat it as a fallback, not a strategy.
- Ownership must be sorted out early: If the mark is owned by the wrong entity, or by a founder who later leaves, your ability to licence it to a distributor or enforce it is compromised. Businesses expanding internationally often hold the brand in a separate entity, and that decision should be made before you file internationally, not after.
Where a Trade Mark Attorney or Lawyer Earns Their Keep
Very little of this requires a lawyer for the everyday steps, but the decisions around them do.
A clearance search in each target market, before you file, tells you whether the mark is available. Running it early means you find out about a conflict before you have spent money on packaging, advertising or a distributor agreement, not after. The searches themselves are usually done by specialist firms, and a trade mark attorney can commission them and read the results.
Choosing the route, direct filing or Madrid, and drafting the specification of goods and services so it will be accepted in each country is specialist work. A trade mark attorney can handle the mechanics of the filing, coordinate local agents where a country requires one, and keep track of the deadlines that come back from each office. If a provisional refusal arrives, a local attorney in that country will usually need to respond, and knowing which refusals are worth fighting is a judgment call best made with advice.
If someone has already registered your mark in a market you want to enter, a lawyer can assess whether you have options: evidence of prior use or reputation in that country, an opposition or revocation action, a negotiated purchase, or a coexistence agreement. Whether any of these are worth pursuing depends on that country's law and the facts. An assessment early in the piece is far cheaper than a fight after launch.
Your Filing Date Is the Whole Game
The decision that decides most international trade mark outcomes is when you file in each market. Because rights are territorial and many countries are first to file, the earlier date usually wins, and everything else is a dispute about exceptions.
Your cheapest insurance is the six months after your Australian filing, when the Paris Convention lets your Australian date protect you across member countries, including through a Madrid application. Spend part of that window on clearance searches in the one to three markets that matter, and file there before you run ads, sign a distributor or list on a marketplace. If you are unsure which markets or classes matter, a short consultation with a trade mark attorney to map the strategy is inexpensive relative to the cost of rebranding in a country where someone else already owns your name.