If your brand is getting overseas orders, the question eventually arrives: how do I protect the trade mark in the countries where I am now selling? The honest answer is that there is no single international trade mark. Protection is territorial, which means a registration in Australia gives you rights in Australia and nowhere else. To protect a brand name, logo or product name in other countries, you need rights in each country you care about, and the most common way Australian businesses build those rights is through the Madrid System.
This article walks through how that system actually works: who is involved, what happens at each stage of an application, what the fees are at each point, and where the process tends to go wrong. If you are weighing up overseas expansion, this is the mechanism you will most likely use, and the cost of using it badly is where most of the money goes.
Why an Australian trade mark stops at the border
Registering a trade mark in Australia gives the owner the exclusive right to use the mark in relation to the goods and services it is registered for, under s 20 of the Trade Marks Act 1995 (Cth). That right is enforceable in Australia. It says nothing about the United States, the United Kingdom, the European Union, Singapore or anywhere else.
International protection therefore means building a collection of national rights. There are two routes to that outcome. You can file separate applications directly in each country, which gives you full control but means dealing with each country's office, language, fees and agents. Or you can use the Madrid System, administered by the World Intellectual Property Organisation (WIPO), which lets you file one application and designate the countries where you want protection. Australia is a member of the Madrid System along with more than 128 other countries, and the Trade Marks Act 1995 (Cth) gives it effect in Part 17A, which deals with protected international trade marks.
The Madrid route is not always the right one. If you only want protection in one country, or the mark you plan to use overseas is different from your Australian mark, direct national filing can make more sense. But for a business that knows the handful of markets it wants, Madrid is usually the starting point, and it is the system this article focuses on.
Who does what in an international trade mark filing
An international application passes through several sets of hands, and each one decides or charges something different:
- IP Australia: the Australian trade marks office. It holds your basic application or registration, checks and certifies your international application and forwards it to WIPO. It also charges its own fees for international applications.
- WIPO: the World Intellectual Property Organisation in Geneva. It administers the Madrid System, checks that the application meets the formal requirements, records it in the International Register and sends it to the offices of every country you designated.
- The designated country offices: the trade marks offices of each country you named. Each examines your application under its own law and decides whether to grant protection in that country.
- You, as holder: you own the international registration and are responsible for monitoring it, responding to refusals and enforcing the mark. No office polices your mark for you.
- Trade mark attorneys: professionals who prepare the application, advise on classes and respond to objections. Some countries require you to use a local agent when an objection is raised.
The five stages of an international filing, and what each one costs
Stage 1: Lock down the Australian base
You cannot file an international application out of thin air. It must be based on an Australian trade mark application or registration, called the basic application. The mark must be identical, the owner must be identical, and the goods and services in the international application must sit within the scope of the Australian claims. Get the Australian foundation wrong and everything downstream inherits the problem.
This is also where class strategy is set. Trade marks are classified under the Nice system into 45 classes covering goods and services. IP Australia's picklist contains more than 60,000 accepted descriptions across those classes, and the number of classes you select drives the fees at every stage from here on. A standard Australian application costs from $250 per class using the picklist, $400 per class without it, and $450 for each additional class. The TM Headstart pre-application service costs from $330. Examination usually takes three to four months, and IP Australia says the minimum time from filing to registration is seven months.
If you might expand overseas, there is one more decision to make at this stage. An international application can claim priority from your Australian filing, which preserves your Australian filing date in the designated countries. You must file the international application within six months of the Australian filing to keep that priority. You can still file later, but the earlier date is lost.
Stage 2: File the international application through IP Australia
International applications are filed online through Madrid e-Filing, which IP Australia runs for Australian applicants. IP Australia reviews the application, certifies it and sends it to WIPO, and it is the channel you must use rather than dealing with WIPO directly.
The fees at this stage are payable to WIPO in Swiss francs. There is a basic fee of 653 CHF for a black and white mark and 903 CHF for a colour mark, and it covers the first ten years of the international registration. On top of that you pay a fee for each country you designate. Most members charge a standard complementary fee of 100 CHF per country. A significant number charge their own individual fee instead, and these vary widely. Current individual fees include:
- United States: 460 CHF per class
- European Union: 789 CHF for the first class, 48 CHF for the second and 144 CHF for each further class
- China: 220 CHF for the first class and 110 CHF for each additional class
- United Kingdom: 240 CHF for the first class and 64 CHF for each additional class
- Japan: 221 CHF for the first class and 208 CHF for each additional class
- Singapore: 265 CHF per class
- New Zealand: 46 CHF per class
These amounts change over time, and WIPO publishes a fee calculator that gives a live estimate in your currency. IP Australia also charges its own fees for processing international applications, so the final figure is the WIPO total plus the IP Australia component plus whatever you pay a trade mark attorney.
Stage 3: WIPO checks and registers the application
WIPO examines the application for formal requirements only. It does not examine the merits of the mark. If the paperwork is in order, WIPO records the mark in the International Register, publishes it and sends it to the offices of every designated country. The certificate WIPO issues at this point is confirmation of the international registration, not a grant of protection anywhere. Each designated country still has to decide for itself whether to protect the mark.
Stage 4: Each country examines the mark on its own terms
Every designated office examines the mark under its own legislation, its own grounds for refusal and against its own register of earlier marks. The same mark can sail through in one country and hit a wall in another, because what conflicts with an existing mark in Singapore may not conflict with anything in New Zealand.
If a country objects, it issues what the Madrid System calls a provisional refusal. The notice sets out the reasons, the time limit for responding and whether you must appoint a local agent. This is the point where an international filing stops being a single administrative exercise and starts behaving like several national applications at once. Miss a response deadline in one country and you lose protection there, and the loss is permanent unless you restart.
The practical result is a patchwork. Protection can be granted in three of your five designated countries and refused in the other two. That is normal, and it is why the cost of the system is better thought of as a portfolio of outcomes than a single registration.
Stage 5: Maintain, renew and expand
An international registration lasts ten years from the date of the original filing, and every designated country shares that single renewal date. Renewal is handled centrally through WIPO, which removes a large part of the administrative burden of keeping multiple national registrations alive.
You can also add countries later. A subsequent designation extends the international registration to a new member, which is the standard way to follow your brand into a new market without filing from scratch. It costs a designation fee for the new country plus a WIPO fee.
What WIPO does not do is enforce the mark or keep an eye on infringers. Monitoring, opposition and enforcement in each country are your job, and in practice they are the costs that surprise businesses most after registration.
The traps that turn a cheap filing into an expensive one
Most of the cost blowouts in international trade marks come from a handful of recurring mistakes, and the mechanism itself explains why each one hurts.
The five-year dependency on your Australian base
For the first five years, the international registration is tied to the Australian basic application. If the Australian mark is rejected, withdrawn or cancelled within that window, the international registration is cancelled with it, even if the overseas offices had already granted protection. IP Australia notifies WIPO of any action that starts within the five years even if it finishes later. The rescue option is a transformation request, which converts the international registration into national applications in each country, but it must be filed within three months of WIPO recording the cancellation, and it comes with new fees and new examination. This is the single most important reason to make sure the Australian base is solid before you build an international structure on it.
Non-use can strip the mark out
Protection is not permanent just because it was granted. In Australia, anyone can apply to remove a mark that has not been used for a continuous period of three years, under s 92 of the Trade Marks Act 1995 (Cth). Most other countries have a version of the same rule, usually three or five years. A mark you register internationally and never use in a designated country can be cancelled, which means paying to protect markets you never trade in is not just waste. It is actively vulnerable.
The specification trap
Your international application can only claim goods and services within the scope of your Australian claims. If the Australian application was filed with a narrow specification and you later start selling a new product line overseas, you cannot simply add it to the international registration. You may need a new Australian application, a new international filing or a fresh national filing, and the race for priority starts again. Specifications that honestly cover what you sell and what you will plausibly sell cost a little more up front and save re-filing later. Over-broad ones attract objections and oppositions. Class selection is a legal strategy decision, not an admin step.
Missing the priority window
Six months from the Australian filing is the deadline for claiming priority. File the international application after that and your overseas filing dates reset, which can let someone else's earlier filing in a designated country block you. For a brand with overseas traction, that window is often the difference between owning the date and fighting over it.
Filing under the wrong owner
The international application must list exactly the same owner as the Australian application, down to the spelling and the entity type. If your Australian mark is in your personal name and your business trades through a company, or the name has changed, you cannot simply file the international application in the company's name. The ownership has to be aligned first, usually by assigning the Australian mark, and that assignment has its own formalities and fees. Fixing ownership after filing is far more expensive than getting it right at the start.
Where a trade mark lawyer earns their fee
The international filing route is designed to be administratively simple, but the decisions around it are legal ones, and the sequence above shows where an expert changes the outcome:
- Before filing: clearance searching in the countries you plan to target, an honest assessment of conflict risk, and a class and specification strategy that covers current and near-future products without inviting objections.
- Choosing the route: whether Madrid or direct national filings suit your mark, your markets and your goods, including cases where the mark differs overseas or the specification varies by market.
- At filing: checking the owner details, the specification and the priority claim so the application does not come back.
- After filing: responding to provisional refusals, coordinating local agents, deciding when to fight an objection and when to narrow the specification, and handling transformation if the basic application fails.
- Ongoing: managing renewals, subsequent designations and the non-use clock, and enforcing the mark against infringers.
An Artificer Legal trade mark practitioner would work through your actual expansion plans, stress-test the markets against your brand and budget, and then run the filing sequence so the traps above do not become your rework.
File early, file narrow, and file once
The cost figures in this article are a warning against delay, not against filing. A one-class international application for a black and white mark designating New Zealand and Singapore costs about 960 CHF in WIPO fees before IP Australia's charges and professional fees, which at recent exchange rates is under A$2,000. International protection for a small portfolio is not a five-figure exercise. What turns it into one is doing it twice: filing after a conflict emerges, losing the priority date, rebuilding the specification, or watching the five-year dependency cancel a structure built on a weak Australian base.
The strongest leverage in this system sits at the very start. Get the Australian application right, file the international application inside the six-month priority window, and keep the specification honest. If you are already trading or about to launch overseas, a conversation about the timing and shape of your first international filing is the cheapest part of the whole exercise, and a free consultation with Artificer Legal can map the options before you spend.