If you’re planning on starting a locally based business or sell goods in a particular area, you may not consider what happens beyond your borders. However, different countries have different laws so if you need to understand China’s trademark laws, want to protect your business from overseas rivals, or want to expand into Europe. you should educate yourself about international trademarks.

How do I trademark internationally?

Want to protect your trademark in more than one jurisdiction? You’ll need to file more than one application as there is no way you can make a single global application. You can look into the options available to you in more depth by contacting a Trademark Lawyer to gain some advice and a professional opinion on having an international trademark. They will go into the details of how to file for this type of trademark, for example you can either file directly into the overseas country or file via the Madrid Protocol. It is an international agreement that many countries are a party to. You can protect your trademark in the countries that are member states of the Madrid Protocol by filing of a single application with the World Intellectual Property Organisation (WIPO). It’s a cost-effective way of obtaining protection; however, the fees depend on how many countries you want to protect your trademark in.

Can I save costs when filing for a trademark internationally?

The cost to file trademark applications internationally can be daunting if your business supplies goods that would fall into more than one class or offer worldwide shipping. But there are ways to manage the costs. It’s recommended that you determine the countries and territories most relevant to your business because these are where you should focus your efforts on protecting your brand and prioritising filing a trademark application. Instead of broadly making the same application in each territory, look at how and where you can save by limiting the classes you apply based on the demand for those products or services there. You do not have to worry about filing a trademark application covering all of your goods and services in every country.

You can also manage costs by taking advantage of convention priority periods. When you file your initial trademark application in your home territory, you have six months to file trademark applications in other countries. You retain the same priority date as your home application. It can just be a help to a new business to stagger the costs in this way. A trademark attorney is your best bet to help you figure out how to prioritise your territories of choice, stagger expenditures, and investigate options that will save you money.

What is a ‘first to file’ country?

This refers to a country that uses a first-to-file trademark system, which grants rights to the first person who applies. Even if someone else can show that they used the trademark before that, they are not recognised by that territory’s trademark law. If you want trademark protection, you have to file and register.

This has implications for businesses trading in countries such as China, for example. It means if you are not based there, you should file a trademark application as soon as possible.

Australia recognises first use rights. While it means you have rights due to the earlier use of a trademark, even if unregistered, it’s still recommended you file an application. While you may still be able to continue using and registering your brand, it will not automatically undo the similar registration. If they manage to register before you, you would need to cancel their registration as the first user legally. Merely registering your trademark first is simpler and more cost-effective.

Is it advisable to file in another language?

Things can go very wrong for a brand if they don’t check the meaning or connotations of an English word in a country they are filing a trademark application in. It would be best to consider how it translates when phonetically sounded out and what it translates as. It’s recommended you go through a local attorney in that country who speaks English to check this. If they flag anything as a concern, you should consider filing your English mark and a native language/character mark.

Should I look into trademark protection in New Zealand?

Australia and New Zealand are indeed close cousins, and it’s attractive for Australian customers to expand their businesses or sell their goods in this territory. Trademark registration is specific to each country. This means your trademark registration, domain name, or business name registration in Australia will not give you rights in other countries. Legally the countries are entirely separate, and you would need to file for trademark protection in New Zealand.

To register in New Zealand, you have two options. You can file a trademark application under the Madrid Protocol (which is an international trademark application) of which New Zealand is a member. Or, you could file a trademark application directly to New Zealand, but you may need to appoint a representative there to do so for you.