So, you want to register your brand as a trademark, not a company name or a business name or a domain name, we’re talking about a trademark on the trademarks register. Trademarks are geographically based, so if you register a trademark in Australia, you get an Australian based protection. If you register it in the UK, you get protection in the UK, your trademark is based where you have registered it.
Now, there are some groups of countries that you can get registration for. For example, the European Union, if you file an application for a European Union application it covers you for all the European Union countries. With the European Union, you file the one application and then each country in that union examines the trademark to see if they are prepared to let you have it as a registered trademark. If one of those countries object, then you have to deal with that objection with a local attorney. So if the objection is in Spain, you have to have a Spanish attorney and they will deal with that objection.
So what about the UK? Because currently as I do this video, they’re part of the European Union, but they may leave in the future, so what happens if that occurs? Well, once the UK splits from the European Union, if you had a prior European Union trademark, you’ll get registration, one for the UK and one for the new European Union, so you will have two trademarks. In the future, if you want the European trademark, you would file for the European Union and then the UK separately.
So trademark registration is not worldwide and once you’ve filed your application in virtually every country in the world, you can then extend it to most other countries. It’s called a Madrid protocol, which is basically where all these countries got together and decided if somebody’s got a trademark in Australia, they can then extend it, they can use this international process and extend it to the US, the UK, New Zealand, and most countries as long as they belong to this Madrid Protocol.
If they don’t belong to the Madrid Protocol, you have to file a new application directly into whatever that country is. So the benefit of extending your trademark using the Madrid Protocol is that you can do it from your home country and through the World Intellectual Property Office, WIPO. Which means you don’t need to have an attorney or representation in each of the various countries that you’re interested in. There is a provisor to this, so for example if your extension to the USA raises an objection from the US Patent and Trademark Office, then you do have to instruct an attorney in the US. Unless you’re in the US, then you can handle the objection yourself, but if you’re in Australia filing into the US, you’d need a US attorney.
If you’re in the US filing into Australia and there’s an objection, you need an Australian attorney. But if the application goes smoothly and there are no objections, then you don’t need to have attorneys in all of those countries. The other benefit of having the Madrid application where you’ve extended it to various countries, is that if you need to amend your trademark in any way, like change the name of the owner, assign to a new owner or change the owner’s address, you can do it at the World Intellectual Property Office, which would then let all the other trademark offices know, rather than notifying each individual country.
You can see that could save you money, but the most important takeaway is that when you get trademark protection it’s for the country, in which you’ve filed your trademark and it doesn’t extend beyond those borders. My name is Cathryn Warburton, and I am the legal lioness.
