International Trade Mark Protection for Australian Applicants (as at 15 April 2011)
1.1 Although trade marks may retain “common law” protection in most jurisdictions, registration nearly always provides a stronger and more cost effective protection. The decision as to whether to commit funds to trade mark registration would normally be based on the perceived value of the trade mark to the trade mark owner.
1.2 One consideration of importance in selecting where trade mark registration should be pursued is the likelihood of local traders to “pilfer” your trade mark. In this respect, countries may be broadly divided between “first-to-file” countries and “first-to-use” countries. In either case, it is necessary to consider whether local traders could establish local trade mark rights ahead of your trade mark rights. In “first-to-file” countries, this may be done by filing an earlier application for your trade mark. In “first-to-use” countries, this may be done by establishing earlier bona fide use of your trade mark in the course of trade. It is usually advisable to give a higher priority to filing trade mark applications in “first-to-file” countries than “first-to-use” countries if you intend pursuing a geographically broad market. However, even in “first-to-use” countries, it may be the case that an earlier application for registration will defeat a later use in the course of trade even if the application had been filed on the basis of an intention to use, and there had been no earlier actual use by the other party. An indication of the category into which each country may fall is given in the Trade Marks Gazetteer page of this website. It should be appreciated that this is a rough guide only, the law of competing trade mark interests being complex in all jurisdictions.
1.3 There are several courses of action possible for pursuing international trade mark protection made possible by virtue of several international agreements to which Australia is a party. In general, these agreements, administered by the World Intellectual Property Organisation (WIPO), an arm of the United Nations, allow the filing of a single trade mark application based on a “basic” application or registration filed in a “home” country. Accordingly, an Australian Trade Mark Application (or Registration in some circumstances) may be relied upon, sometimes within particular time limits, for securing overseas trade mark protection. The several alternative courses are discussed below, followed by a discussion of regional patenting organisations.
1.4 Additionally, an analysis of the meaning or symbology of a trade mark in local languages or cultures is advisable to avoid selection of a trade mark which is obscene, rude, scandalous or undesirable for any other reason.
2. Individual Countries
2.1 Individual Trade Mark Applications may be filed in separate foreign countries at any time bearing in mind local user provisions. Applicants can expect costs to range from $1,500.00 to $2,800.00 per mark for a threshold number of classes, with extra costs for additional classes ranging from 50% to 80% of the cost for the maximum number of classes under the threshold. Some countries provide up to three classes below the threshold, and others provide only one class. Additionally, some countries provide for only single class applications, and therefore, several applications may be required to cover the full range of goods and services for which protection is required.
2.2 The approach of filing over an extended time in several countries may be appropriate if it is not seen as necessary that trade mark registration to be pursued quickly in all countries. Since trade mark registration is not compulsory (except for a few countries), protection may be sought when cash flows generated from the sale of goods and/or services under the trade mark justify cost involved. However, applicants should consider conducting availability searches in areas of geographical interest prior to the adoption of a trade mark. Searches should extend to the jurisdictions of the main markets for the goods and services in respect of which the trade mark is used or proposed to be used.
2.3 If protection is required in several jurisdictions, particularly if so within a short time frame, then the following alternative routes to obtaining trade mark protection overseas should be considered.
3. International Trade Mark Application under the Madrid Protocol
3.1 An International Trade Mark Application under the Madrid Protocol may be filed at the Australian Trade Marks Office designating any one or more contracting states (Madrid Protocol countries). The contracting states of the Madrid Protocol are indicated in the appropriate column of the Trade Marks Gazetteer as at the date indicated on the Gazetteer.
3.2 One of the advantages of an International Trade Mark Registration under the Madrid Protocol is the reduced cost of filing a single application which covers simultaneously up to more than eighty trade mark offices, although separate prosecution in each jurisdiction may become necessary. A further advantage is that an International Trade Mark Registration may be extended to further countries as required, even if such countries join the Protocol after the filing of the original application for International Registration.
3.3 An International Trade Mark Application must be based on an earlier application or registration, (“basic application” or “basic registration”) such as an Australian Trade Mark Application or Registration. It may also be possible to claim priority under the Paris Convention (discussed later in this advice). An International Trade Mark Application is filed at the same office as the basic application or registration, such that the Australian Trade Marks Office serves as the “Office of Origin” for Australian applicants or registrants. One purpose of the Office of Origin is to certify that the International Trade Mark Application complies with the provisions of the Madrid Protocol insofar as the particulars of the international application are concerned, and that it is in accord with the particulars of the basic application. The Office of Origin must certify and forward the International Trade Mark Application to the International Bureau within two months of the application date, or the application date will be lost. The Office of Origin will also monitor the basic application for at least five years from the date of filing the International Trade Mark Application, and inform the International Bureau if there is any change made the scope of the basic application or registration.
3.4 The International Trade Mark Application is examined as to formalities by the International Bureau, and will be registered in the International Register without further examination once formalities have been met. After International Registration, substantive examination as to registrability may be conducted in each designated country by the local trade marks offices of the relevant countries. If there are grounds for refusal of protection, then a report is issued to the International Bureau, who will forward the report to the applicant. Refusals must be made within twelve or eighteen months, and most countries allow for a review of, or appeal against, a refusal. Refusal may be on absolute or relative grounds. If no refusal is issued, or it is overcome, the International Trade Mark becomes “protected” in each designated country, whereupon the trade mark owner will have the same protection against infringement of the trade mark as if the trade mark had been registered in that country.
3.5 Typical Australian trade mark attorney charges for preparing an International Trade Mark Application for a single mark in up to three classes would be of the order of $2,700 to $2,800 (plus GST if applicable), plus $400.00 to $500.00 per class per designated country where no individual designation fees are payable, and between $800 to $1,000 per class (over a threshold of one, two or three classes) per country for countries where individual designation fees are payable, but with an exception being Japan, where the individual designation fee is about $1,800.00 per class. The actual charge depends upon the official exchange rate set by the Australian Trade Marks Office between the Australian dollar and the Swiss franc. There are also additional charges if the trade mark is a coloured mark.
3.6 It should be appreciated that within five years from the date of filing the International Trade Mark Application, an International Registration is vulnerable to “central attack". A change in the status of the basic application or registration will also affect the International Trade Mark Application or Registration, leaving the International Trade Mark Application or Registration open to attack from an adversary attacking the basic application or basic registration. However, an International Trade Mark Registration can be converted to a local application and furthermore, it can survive independently from the basic application or registration if, after five years from the date of application of the International Registration, no action has been taken against the basic application or registration.
3.7 There are limitations as to the ownership of International Trade Marks. The applicant or registrant must be domiciled, resident in, or have a real and effective commercial or industrial establishment in a member country of the Madrid Protocol. Moreover, the applicant for an International Registration must reside of have a real and effective commercial or industrial establishment in the country of the basic application or registration.
3.8 The European Community is a party to the Madrid Protocol. Therefore, protection may be extended to all members of the European Community. In order to proceed with the European Community Trade Mark designation, a second language in addition to the official language of the International Application must be selected from the official languages of the European Community Trade Marks Office.
4. Convention Applications
4.1 An alternative covering many more countries than the Madrid Protocol is made possible by virtue of the Paris Convention of 20 March 1883. However, the Paris Convention still requires separate trade mark registrations in each separate jurisdiction where protection is required. The Paris Convention applies for over 170 countries which are members of the International Union for the Protection of Industrial Property (Convention Countries). The Paris Convention provides for Convention applications to be filed up to six months from date of filing a trade mark application for the same trade mark for the same goods and/or services in one Convention country, and retain the filing date of that application as a priority date in the remaining Convention countries. Thus, an Australian Trade Mark Applicant may file applications in any one or more Convention Country claiming the Australian filing date as a priority date provided the minimum filing requirements are met within six months. In this respect, please refer to our comments under General Guidelines below. Australia also has other arrangements, such as bilateral agreements, reciprocity through the World Trade Organisation, or “inter-imperial” arrangements, which provide an equivalent 6-month priority period through which an Australian filing date may be used as a priority date. The Trade Marks Gazetteer gives an indication of which countries are Convention Countries.
4.2 Several regional trade mark organisations for Europe and Africa are effectively members of the Paris Convention. Accordingly, regional trade mark applications may be pursued in the respective regional trade mark offices claiming a right of priority under the Paris Convention. Regional trade mark organisations are discussed later in this advice.
4.3 Costs for filing Convention applications vary considerably from country to country, but as a guide, applicants can expect costs to be as indicated above in respect of individual countries. Although the initial costs are delayed by up to six months, the high cost burden still occurs within the convention period.
5. Regional Trade Mark Offices
5.1 There are three well established regional trade mark registration organisations covering several geographically or politically associated countries, namely, the European Community Trade Mark Office, formally known as the Office for Harmonization in the Internal Market (OHIM), the African Intellectual Property Organisation (OAPI) and the African Regional Industrial Property Organisation (ARIPO). A fourth regional organisation has recently been established in the Middle East by virtue of the Gulf Co-operation Council (GCC), but its development at this stage is not complete.
5.2. European Community Trade Mark Applications as at 2 June 2008
5.2.1 Under the Regulation on the Community Trade Mark (CTMR), it is possible to file a single trade mark application at the European Community Trade Marks Office (OHIM) covering all members of the European Union (EU). The Trade Marks Gazetteer indicates member countries of the CTMR with the two-letter code CT in the “Region” column as at the date indicated on the Gazetteer.
5.2.2 The cost of filing a European application is typically of the order of $5,000.00 to $7,000.00 (plus GST where applicable) for up to three classes. Additional classes cost of the order of $500.00 to $800.00.
5.2.3 A European Trade Mark Application is prosecuted and registered as a single application in the English language.
5.2.4 The main advantage of a European trade mark application over individual applications in separate countries is that it involves a lower cost than equivalent protection in even a handful of member states. The European trade mark application attracts a single sequence of prosecution costs compared with separate prosecution costs for proceeding in individual countries, and the application may be prosecuted in the English language.
5.3 African Regional Trade Mark Applications as at 2 June 2008
5.3.1 There are two regional trade mark entities, together covering about half the territory of Africa.
5.3.2 The more developed one is the African Intellectual Property Organisation (OAPI) comprised largely of Francophone African countries. For patent, utility model, trade mark and design registration purposes these countries have effectively formed a single entity. Designation of individual member countries is not possible since the territorial application of an OAPI registration extends to all member countries.
5.3.3 The member countries of OAPI are indicated in the Trade Marks Gazetteer by the two-letter code OA. The cost of an OAPI application is of the order of $6,000 (plus GST if applicable), and is prosecuted in either English or French.
5.3.4 The second African regional organisation is the African Regional Industrial Property Organisation (ARIPO), comprised largely of Anglophone African countries. Selected member countries may be designated in an ARIPO trade mark application lodged in the trade marks office of any member country, and once successfully prosecuted and registered an ARIPO trade mark registration is automatically registered in all member countries. However, although five countries (indicated by the two-letter code AP in the Gazetteer) have signed the protocol under which an ARIPO trade mark application may be effected, none of them has enacted any local legislation which recognises an ARIPO registration. Accordingly, it is advisable to rely on local trade mark provisions.
5.3.5 An ARIPO trade mark application is prosecuted in the English language. When an ARIPO application becomes a realistic proposition, an indication of likely costs may be made available.
5.4 Gulf Co-operation Council as at 2 June 2008
5.4.1 The Gulf Co-operation Council (GCC) was established in 1981 for the economic co-operation of Arab States comprising Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. Yemen is undertaking procedures to become a member by about 2016. Although the GCC has made an announcement that it intends to provide for regional trade mark protection, no provisions are as yet in place for trade mark, and it is not known when (or whether) such a system is expected. The members of the GCC are indicated in the Trade Marks Gazetteer by the code GC.
6. General Guidelines
6.1 The above information has been prepared from several sources, and every effort has been made to ensure accuracy. Costs will vary with foreign exchange rate fluctuations and changes in government fees and associates' charges. I take no responsibility for any errors or omissions, and if specific advice should be sought from your professional advisor for your particular requirements. Up-to-date information is available from many sources including the Internet. The WIPO home page at http://www.wipo.int is recommended.
6.2 Please note that some countries require filing of a local applications before use of the trade mark within their respective jurisdictions. Some countries have compulsory registration provisions. Some countries have ongoing requirements to provide evidence of use of a trade mark in order to maintain its registration.
6.3 The cost estimates above may serve as a general guide only and considerable variation would be expected, especially for complex cases and cases which do not follow a straightforward application process. Most Australian Patent and Trade Mark Attorney firms have established competitive charges based on guidelines provided by the Institute of Patent and Trade Mark Attorneys of Australia. The above typical cost guidelines are based on timely instructions to an Australian Trade Mark Attorney received a minimum of two months prior to filing foreign cases and unless otherwise indicated are inclusive of GST. Please note that there may be considerable cost penalties for late remittance or late instructions. Moreover, late instructions or payment, may result in the attorney not being able to meet deadlines dates, whether for Convention applications, national prosecution time limits or any other requirement necessary to keep a case alive. Most Australian Trade Mark Attorneys will not instruct overseas associates unless arrangements have been made for funding such instructions. The current rate of GST in Australia is 10% of the Attorney's charges, but no GST is levied on Australian Trade Mark Office Fees.
6.4 Many countries have onerous formality provisions, and as such, notarisation, authentication and legalization of forms, the preparation of formal representations or the provision of extra translations or extra information or tallages can cause delays and increase costs. Furthermore, cost guidelines for some countries have been found to be unreliable. Most countries require payment of official fees to establish a filing date.
6.5 It should also be appreciated that the filing of a trade mark application begins a process of prosecution which typically involves an annual cost of between one third and two thirds the application costs over a span of from one (1) to three (3) years, though prosecution may commence at any time from filing to several years from filing. If the mark to be registered encounters difficulties, then costs in achieving registration will be greater, if registration is possible at all. Registration fees for an application once approved are typically between 10% and 50% of application cost. The OHIM and OAPI have relatively involved registration procedures. Typically registration costs are approximately $2,000.00 for the OHIM and approximately $1,500.00 for OAPI and ARIPO. Additionally, renewal fees are payable in most countries every ten years, and are typically between 30% and 95% of the application cost.
7. Current Events as at 15 April 2011
7.1 The information following has been prepared from information received, and so no responsibility is accepted for its accuracy or currency.
7.2 The dissolution of Netherlands Antilles into the three separate entities of Bonaire, Saint Eustatius and Saba (BES Islands), Curaçao and Sint Maartin has resulted in a corresponding division of the former Netherlands Antilles trade mark register. The BES Islands retains the original register, and it is not yet clear what arrangements are being made for protection in the other two jurisdictions. However, it is quite likely that Sint Maartin (which occupies the Dutch half of Saint Martin) will provide for the automatic extension of BES Islands registrations to the territory of Sint Maartin and that Curaçao will provide for re-registration of what will become BES Islands registrations in Curaçao when establishing their independent trade mark register.
7.3 The above information should enable you to plan a course of action suitable to your particular requirements, however, if you require verification, amplification or clarification of any of the above comments, then I would be pleased to be of assistance.
Copyright © 2011 Bill Anderson