Increasingly, a number of our clients are expanding their business interests outside of Australia and consequently should give consideration to protecting their brands overseas.
Not having a physical corporate or trading presence outside of Australia will not protect you if you promote your goods and services outside of Australia in breach of another party’s registered or unregistered rights. You can be sued in foreign courts or your goods can be seized by foreign customs agents if your overseas trade breaches a third party’s rights.
Essentially, the steps you should take to protect your brands in Australia should be reflected in any overseas markets in which you trade.
At a minimum, prior to selling or providing any good or services overseas, consideration should be given to initiating a trade mark clearance search in the country of interest, to ensure that your sale or promotion of your good or services will not infringe any third party’s rights.
Having recently attended the International Trade Mark Association’s Annual Conference in Washington and having represented a number of Australian companies with overseas interests for a number of years, we are well placed to manage this process for you. We have international agents that we have established relationships with in numerous countries including the United States, United Kingdom, China, South Africa, India and Mexico.
Generally, the costs of protecting your overseas brands are comparable to protecting your brands here in Australia.
Madrid Protocol Application
After conducting trade mark clearance searches in the countries of interest to you, should you wish to try and secure registration of your overseas brands, a Madrid Protocol Application may be more cost effective that filing trade mark applications in the individual countries of interest to you.
This is a process pursuant to which you can file a trade mark application in multiple countries via a single trade mark application, which process is administered through Australia’s Trade Marks Office.
If appropriate we can assist with the filing of a Madrid Protocol Application.
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