Each country generally maintains its own trademark register. If you intend to offer your product or services in multiple countries, you have to make a choice- you can file individual applications in each country, or you can file an international application under the Madrid Agreement.
APPLYING FOR TRADEMARK REGISTRATION IN INDIVIDUAL FOREIGN COUNTRIES
Australian trademark lawyers normally cannot file trademark applications overseas. Firms use a network of foreign “associates”, or law firms in other countries when something needs to be filed. We generally continue to control the foreign application for you, acting through our foreign associate, and will try to achieve the most cost effective outcome.
If your foreign application is filed within six months of your application in Australia, it may be entitled to the priority of your Australian application and assigned a priority filing date. That means the application will be examined as if it were filed on the same date as the Australian application.
Filing individual trademark applications in ever foreign country of interest can be expensive. In addition to each country’s filing fees, you pay for two levels of attorneys. Typical total costs can be $2,500 per country to get the application filed. Registration in the USA or UK can cost $3,000 to $3,500. We can save costs by for the UK by applying for a Community Registration in combination with other EU countries.
MADRID AGREEMENT
The Madrid system provides a mechanism whereby a trademark owner who has an
existing trademark application or registration in Australia may obtain an “international registration” for their trademark.
The trademark owner may then extend the protection to one or more member jurisdictions, a process known as “designation.” An international application under the Madrid System must originate in a member country and each country designated for protection in the application must also be a member.
Some countries that are presently not members of the Madrid Union include Canada, Mexico, New Zealand, South Africa, India, Pakistan, Hong Kong, Taiwan, Malaysia, the Philippines, Indonesia, Thailand, Israel, and most of Latin America. Trademark protection in these countries can only be achieved by individual applications.
The most significant advantage of filing through the Madrid System is the potential for cost savings. The cost will almost certainly be less than applying separately for registration in each country because both filing and renewal fees are handled as single fees by the ‘home’ country office.
Protection is usually faster because of strict time limits set under the System, and an international online database places third parties on notice of a registrant’s claim of worldwide trade mark rights.
Madrid Protocol fees (WIPO/National fees) depend on the number of designated countries and current foreign exchange rates (International Fees must be paid in Swiss Francs) and is the sum of all the separate filling fees for each designated country.
Typically, an applicant should budget $1,500 – $2,000 per designated country to
cover the designation fee. All fees related to Madrid filings must be paid in advance.
We can negotiate a flat fee for our services, in line with our fees for an Australian application, and we will quote all of our fees before we start work.
The International Bureau will register the mark and notify each country that was designated. If the application meets the requirements for registration of that country, then the country will grant protection of the mark.
However, objections might be raised in one or more of those countries, which will have to be dealt with through local attorneys in each country. It is not possible to estimate the costs of foreign prosecution. Applicants should budget a minimum of $1,600 – $3,000 per country in which the application is rejected to cover any foreign attorney fees required during prosecution.
