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Why You Need Overseas Trade Mark Protection

Janice Yew | October 16th, 2015

If you are planning to export or expand your business overseas, you need to ask yourself if your brand has sufficient overseas trade mark protection.

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Many business owners looking to export out of Australia are unaware of the implications of exporting overseas without first protecting their intellectual property (IP). Perhaps this is because IP is the last thing on their minds, but ignoring international IP protection be one of the biggest mistakes they can make for their businesses.

Unfortunately, we see clients making this mistake all too often. Even large businesses (like Penfolds) can make this mistake.

How does overseas trade mark protection help your business?

Firstly, it gives your business enforcement and protection rights over your trade marks.

Secondly, it ensures that you, as a trade mark owner, can continue to have the freedom to operate (including the freedom to use their trade marks) without your trade mark getting blocked by a subsequent third party trade mark application in a foreign jurisdiction.

In most cases, the Madrid Protocol will provide a cost-effective means to obtain overseas trade mark protection. 

Handpicked related article: Exporting Overseas? Here are 5 Tips to Protect Your Brand before You Go

What is the Madrid Protocol?

The Madrid Protocol is a system which enables applications to be filed in Australia for trade mark protection in certain overseas jurisdictions (including the European Community and the United States). You can refer to the full list of countries here.

In countries where the Madrid protocol is not the best option, law firms usually turn to their international network of trade mark agents for the application process.

Always protect your trade mark overseas

If you don't want to run into a situation where a copycat takes over your brand, you should include overseas trade mark protection in your international expansion or exportation strategies. 

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Janice Yew


Janice joined mdp in 2013 as a law clerk while completing her Juris Doctor at the University of Melbourne. In 2015, she came onboard full-time as a law graduate, and started working in the firm’s property, commercial and intellectual property practices.