How can I register an international trademark?
If you have an Australian trademark, it is protected only within Australia. In order to protect your trademark in overseas jurisdictions you must either:
- file a trademark application directly in accordance with each countries jurisdiction/laws regarding trademarks; or
- file an international trade mark application through the World Intellectual Property Organisation (WIPO).
What are the benefits of applying through WIPO?
While applying for a trademark directly in another country may seem straightforward, you will need to seek advice from an intellectual property professional before doing so, adhere to their systems of trademark registration and apply to each country separately. It is for this reason that applying for a trademark through WIPO may be the preferred option.
Applying for an international trademark through WIPO means:
- you can apply for international trademark protection with Australia’s member countries in one request;
- the request is filed in English;
- payment is made to WIPO in one currency (Swiss francs);
- the process is simpler and cheaper than directly applying to each country;
- you do not need to have an address for service within the contracting countries at the time of filing;
- you only need to make a single request to make changes to, or renew, international registrations; and
- you are able to make subsequent designations in other member countries at a later date.
What are the requirements for international trademark applications?
In order to apply for an international trademark:
- you must have an application and/or a registration in Australia on which to base your application;
- you must meet entitlement requirements within Australia;
- the mark on the international application must be identical to that contained on the Australian application/registration;
- the goods and services in your international application must be covered by the claims in the Australian application/registration; and
- the applicant on the international application must also be the applicant on the Australian application/registration.
How long does an international trademark registration last?
International trademark registration is protected for a period of 10 years from the date of registration and can be renewed every 10 years upon payment of the relevant fees.
How much does it cost to register an international trademark through WIPO?
The cost depends on how many countries you want your trade mark to be protected in, which countries they are, and how many classes cover your goods and services.
You can use the WIPO Fee Calculator to calculate the fees of your international application.
It is important to note that fees charged by WIPO are in Swiss francs and the exact figure in Australian dollars will depend on the conversion rate used on the day your application is submitted.
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