14 September 2016

Our clients are often surprised to learn that their registered Australian trade marks do not apply in other countries. However, like other forms of registered intellectual property rights, it’s true – trade marks are only registered on a per country basis.

In this IP Communique Moulis Legal partner Shaun Creighton and senior lawyer Patrick Polis provide our entrepreneurial and ambitious client network with a kind of “international IP 101”. When is your trade mark “legit”, and protected? What do you need to do to safeguard the intellectual effort and plain hard work you have dedicated to the development of your business and your ideas?

Enjoying Madrid and Paris, without the airfare

So, is your trade mark legally protected all over the world? Unless you have registered everywhere, it’s not. But help is at hand.

Australia is a signatory to a treaty called the Madrid Protocol. Signatories to the Madrid Protocol include the United States, the European Union, China, Japan and New Zealand. Under the Madrid Protocol, a rights holder may file a single International Application – from Australia – nominating any country that is also a signatory to that international instrument as a place in which it seeks registration of its trade mark. An application like this acts as a bundle of applications filed in the designated countries. If accepted, an International Registration is issued by the International Bureau at the World Intellectual Property Organisation.

An application under the Madrid Protocol assumes that the Australian trade mark application proceeds to registration and that the trade mark remains registered in Australia for a period of five years. Failure to meet these requirements will result in applications under the Madrid Protocol being denied and any registrations in other countries being removed.

Under another international convention – the Paris Convention – an International Application will benefit from the Australian filing and registration dates in other signatory countries. These dates are important from the perspective of protection of the mark. Whereas only about half the countries in the world are signatories to the Madrid Protocol, most countries are signatories to the Paris Convention.

In the case of countries that are not signatories to the Madrid Protocol, a local lawyer or trade mark attorney will usually need to be instructed. We have a network of international agents we can use to assist in such circumstances.

Brand “new” or brand “no” – available, or asking for trouble?

An effective IP strategy includes an assessment of whether “your” brand is available in jurisdictions of interest, or whether your use of the brand in specific jurisdictions prior to registration would infringe the rights of third parties. Accordingly, it is prudent to have pre-filing or pre-use availability and infringement searches conducted in those jurisdictions.

The Moulis Legal team provides a range of Australian and international trade mark searches and advice, including:

  • Exact search – a basic and quick search, involving review of a Trade Mark Register dataset to see whether there are marks which are identical or substantially identical to the search mark and whether they are registered or applied for in classes of goods and services of interest.
  • Infringement search – a search against a Trade Mark Register dataset with a view to identifying registered and applied-for marks which the search mark might infringe by virtue of being substantially identical, or deceptively similar, and proposed for use for overlapping goods and services.
  • Inherent registrability assessment – an assessment of whether there is some aspect of the mark in itself which would cause problems for registration, including descriptiveness, lack of distinctiveness, inherent deceptiveness, unfavourable connotations and breach of rules relating to protected symbols.
  • Availability and infringement search – the most comprehensive search we offer, undertaken against both the Trade Mark Register dataset and selected off-Register sources including White Pages, Yellow Pages and the Australian Securities and Investment Commission names dataset, with a view to identifying the availability of the trade mark for both registration and non-infringing use. This search is ideal for pre-registration and pre-use situations and includes advice about the inherent registrability of the mark.

First to file or first to use – which is it?

Some jurisdictions have adopted a “first to file” system, others are “first to use”. For “first to file” jurisdictions, which include China and Japan, applications should be filed as soon as practicable, for obvious reasons.

By contrast, “first to use” jurisdictions such as Australia, New Zealand, Singapore and the US recognise the acquired rights of a person that first uses a trade mark (whether registered or not). For “first to use” jurisdictions, use is a basis for overcoming objections arising from an earlier filed similar trade mark. It may also provide grounds to oppose registration of a similar mark by a third party, or depending on the facts, to seek cancellation of a registered trade mark.

Whatever the case, overseas trade mark applications should be made as soon as possible after an international strategy is confirmed and there is a clear intention to use in those jurisdictions. Some countries will require declarations attesting to an intention to use.

Mind your language!

An important aspect of any trade mark registration, whether within Australia or in a foreign country, is the language used within the mark itself and the description of the mark.

In Australia, if your trade mark contains non-English characters or words, you must provide a translation and/or a transliteration of the trade mark. A translation is the provision of an English meaning of non-English words. A transliteration is the conversion of foreign characters or words into corresponding Roman letters or English words. Whether a literal translation of the characters or words of an original mark or their transliteration correctly reflects the brand is an important consideration for any registration.

For example, the English translation of the Japanese characters “こんにちは” is, “HELLO”, whereas the transliteration of the same characters into Roman letters is, “KONNICHIWA”. Of course, a superior international branding strategy needs to consider any connotations or slang usages of words in other languages. This is why the Mitsubishi Pajero – slang for “masturbator” in Spanish – is known as the Montero in certain Spanish speaking countries.

Moulis Legal is commercial+international – we know your rights

With the advent and proliferation of the internet, the world is now a single marketplace and brand recognition is no longer merely a regional consideration. Failure to implement a proper international trade mark management strategy can lead to disparate international branding, or even the outright loss of a proprietary right to a brand in key jurisdictions.

Inconsistencies in branding carry associated monetary and public relations costs. Contests between rights holders can be business-critical. For example, the international “Burger King” brand is “Hungry Jack’s” in this jurisdiction – due to the existence of a pre-existing “Burger King” brand in Australia that expensive litigation just could not budge. More recently, Chinese sporting shoe brand “Feiyue” has had its international expansion plans restricted by a third party that secured the trade mark rights to that brand in France for itself.

Your IP – your brand, your mark – has value. It can be registered, controlled and commercialised. At Moulis Legal we understand the power of ideas, and the value of effort. We register your marks. We allow you to exploit and protect them, through international distribution agreements, international master franchise agreements, and the like.

For more information, please contact Shaun Creighton on +61 2 6163 1000 or

This memo presents an overview and commentary of the subject matter. It is not provided in the context of a solicitor-client relationship and no duty of care is assumed or accepted. It does not constitute legal advice.

© Moulis Legal 2016