Madrid Protocol for Australian and New Zealand clients filing Trade Marks internationally

An Australian trade mark registration only secures your rights within Australia. To protect your brand in other countries, there are 2 options:

   1. File a single application via the Madrid Protocol designating your countries of interest, or

   2. File national applications directly into each country of interest.

Australia is party to an international treaty called the Madrid Protocol. The Madrid Protocol enables protection to be sought in up to 122 member countries. If you are seeking protection in multiple countries, this may be a more cost-effective way to register your mark as it allows for the filing of a single application. However, regardless of the filing method, your application will be examined by the IP Office of each overseas country in which you seek protection.

For Madrid Protocol applications, our firm files the application directly and it may only be necessary to engage foreign Associates if an objection is raised in a particular country. If that is the case, we may need to engage a foreign firm to enter as your representative in that country and prosecute the application on your behalf.

It is also possible to make subsequent designations under the Madrid Protocol, if you wish to add further countries at a later date.

flowchart showing steps for applying for a Madrid based trade mark application (from AU)
                 Click to enlarge

• In order to file a Madrid application, you must have already applied for a trade mark in your “home” country i.e. with IP Australia, or IPONZ for New Zealand trade mark owners

• If the Madrid Protocol application is filed within six months of your “home” application, you will retain the original filing date or “priority date”.

• Brand owners who export goods to, or manufacture goods in any first-to-file countries should file their trade mark application as early as possible to minimise the risk of another party obtaining the rights for that trade mark.

It is important to note that overseas trade marks filed pursuant to the Madrid Protocol are dependent on the corresponding “home” registration for a period of five years. This means that if your Australian or New Zealand application fails to register, it may be necessary to convert countries designated via the Madrid Protocol to national country filings. 

Please contact us directly on +61 3369 2226 or regarding advice on the best strategy for trade mark protection overseas.