If your trade mark is registered only in Australia, your protection stops at the border. To protect your brand internationally, you must register your trade mark overseas.
You can do this either by applying directly in each country or by lodging a single international trade mark application through the World Intellectual Property Organization (WIPO) under the Madrid Protocol.
This guide explains how to register an international trade mark, the benefits of filing through WIPO and what you’ll need to prepare before applying.
Why register an international trade mark?
An Australian trade mark gives protection only within Australia.
If you sell, manufacture or license your products overseas, you’ll need to register your mark in other jurisdictions to:
- Prevent unauthorised use of your brand overseas;
- Retain control over international licensing and distribution;
- Avoid trade mark “squatting” in foreign markets; and
- Build brand value and investor confidence.
How to register an international trade mark
There are two main ways to secure overseas trade mark protection:
- Apply directly to each country’s trade mark office (for example, the USPTO or EUIPO); or
- Apply once through WIPO using the Madrid Protocol system.
Most Australian businesses choose the WIPO route because it’s faster, more affordable and managed in English through IP Australia.
Benefits of applying through WIPO
Applying through WIPO allows you to:
- File a single application covering multiple member countries;
- Use English as the filing language;
- Pay all fees to WIPO in one currency (Swiss francs);
- Avoid needing an address for service in each country at filing;
- Make later changes or renewals via one request; and
- Add (“designate”) more countries at a later stage.
Overall, the Madrid Protocol simplifies protection across more than 110 countries while reducing administrative and legal costs.
Eligibility and application requirements
To apply for an international trade mark through WIPO:
- You must already have a pending or registered Australian trade mark;
- The mark on the international application must be identical to your Australian mark;
- The goods and services listed overseas must be covered by your Australian application or registration; and
- The applicant details must match those on your Australian filing.
IP Australia acts as the “Office of Origin” and will certify your application before sending it to WIPO.
If you’re registering your first trade mark in Australia before expanding overseas, see our Trademarks page for guidance on the local application process.
How long does an international trade mark last?
An international registration lasts for 10 years from the filing date and can be renewed indefinitely in 10 year periods by paying the renewal fee.
How much does international registration cost?
The cost depends on:
- the number of countries you select;
- which countries they are (each has a separate fee schedule); and
- the number of trade mark classes covering your goods or services.
You can use the WIPO Fee Calculator to estimate costs.
Keep in mind that WIPO charges fees in Swiss francs and your total in Australian dollars will depend on exchange rates at the time of filing.
For a complete overview of how we help clients register, protect and commercialise their intellectual property in Australia and overseas, visit our Intellectual Property page.