You should have an international trademark registration if you're currently using or intend to use the mark in another country.
The earlier you obtain registration, the sooner you'll have confidence in your right to use your mark in that country.
It's important to get legal advice if you're unsure about whether you need an international trade mark and to get help with your strategy.
What is an international trademark?
An international trademark can refer to either:
A 'local' filing, usually filed through trademark lawyers or attorneys in the jurisdiction where you're filing; and/or
An 'international' trade mark, which is filed through the World Intellectual Property Office (WIPO). WIPO offers centralised management of trade mark applications in individual countries. An application filed via WIPO is treated very similarly to a local filing.
To learn more about the how to file, read our guide on how to file an international trademark.
Whether you choose to file a local or international application will depend on your particular circumstances. A lawyer can help you with an international trademark strategy.
Do I need TM protection in other countries?
If you're using your mark in that country, then yes - TM registrations are national rights. This means you only receive protection in the countries where you have a registration.
There are some multi-country international TM systems, like the EU (administered by the EUIPO), and regional Africa (administered by ARIPO).
Should I apply?
Whether you should file depends on your business' particular circumstances. You should take into account the risks and benefits, and seek advice from trademark lawyers .
The risk and benefits may differ slightly from jurisdiction to jurisdiction.
Before deciding to file in a new country, you should consider:
the extent to which you are likely to conduct business in that jurisdiction under the relevant mark;
the risk of other traders infringing your goods or services (and, whether you would take action if your mark was infringed in that jurisdiction); and
the risk and potential consequences of you inadvertently infringing another person's rights in that jurisdiction.
The benefits of filing
International TM protection can have many benefits, including:
You can confidently use the TM in that market
Having a registration in a country means you'll be able to confidently use your brand in that country.
The difference between obtaining a registration sooner rather than later can sometimes mean the difference between securing rights, and being able to use your brand in a country or not.
For example, the first Burger King franchise in Australia couldn't use the name 'Burger King' due to an earlier registration. The franchise had to adopt the name "Hungry Jack's" instead.
In some jurisdictions, whoever files first will own rights in that TM (rather than whoever uses it first, as is the case in most other countries, including Australia).
This in turn can impact whether you are even able to use your brand and TM in that overseas market.
You may have a defence against infringement
If someone else has a local registration, and you use the same or a similar mark, you could be infringing their rights and might have an infringement claim brought against you.
Although the laws in countries differ, having a registration typically provides a defence against claims of infringement by others.
If you’ve weighed up the pros and cons of going international and you wish to register a trade mark overseas, see our guide on how to file an international trademark.
Still unsure about whether to go ahead? Get some strategic guidance from trademark experts.
The risks of not owning an international TM
You should be aware of your legal position before using a mark overseas.
If you use a TM overseas but don't have a registration, you could inadvertently infringe another person's rights.
If you don't know whether to file or if you need help with searches, we can help.
What should I consider before I use my mark overseas?
It's important to consider whether you need an international TM registration.
It's also important to get strategic advice from trademark lawyers before starting to use your brand.
Having an international strategy in place will help you to protect your rights in the jurisdictions you need, in a way that is the most efficient and cost effective for your particular circumstances.
If you don't already have a registration in Australia, read our guide on how to file a trademark application in Australia.
Do different laws apply?
Yes, each jurisdiction ultimately has its own laws and ways of interpreting and applying those laws. Even the concept of what constitutes "using" a trade mark differs.
Fortunately for you (and us!) there is a significant amount of agreement between jurisdictions on trade mark processes and systems. This means that while there are slight differences between countries, most of the important parts of trade mark law are the same or similar.
We have kept things very general in this article, but it's important to be aware that laws and local practices applicable differ between jurisdictions.
Considering applying for a TM overseas, but not sure where to apply? Read our guide on where to file your international trademark.
Want to go ahead and file? See our guide on how to file an international trademark.
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*Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.