Never assume

You’ve probably heard how you need to get your trade mark registered, but it may not be that simple. Here’s the checklist…

Never assume…

A new client came to me yesterday to talk about expansion of their cosmetics business. They are hoping to export in the future. Going through the usual checklist, I asked him whether they had any registered trade marks, to which he answered very proudly “oh yes, we have a world wide trade mark registration! I did it myself!”

I was sorry to burst his bubble. There is no such thing as world wide trade mark registration. This is a big misconception among many potential exporters.

This client’s misconception came about because when processing his Australian trade mark application, he received notification from IP Australia that he had to wait a period of time between acceptance and registration to allow for any potential objections from the international bureau in Geneva.

He took this to mean that the World Intellectual Property Organisation in Geneva was in fact vetting his trade mark application also. This was not the case; it simply meant that there might be some international applications for registration of trade marks in Australia that may prevent his application from being registered in Australia.

To register trade marks internationally you have two options. Register directly with the trade marks office of each individual country in which you seek registration; or register under the Madrid Protocol. This is an international treaty, which a number of different countries are signatory to. The treaty allows you to apply for trade mark registration in one or more signatory countries from Australia, in Australian dollars and using IP Australia as the middle man.

You still need to choose the countries and the cost of registration will depend on the number of countries you choose as well as the number of trade marks and the number of classes you wish to register in.

To register “world wide” would cost hundreds of thousands of dollars! You can imagine my client’s dismay when I told him that!

Lynda Slavinskis is an outgoing, intuitive and commercially savvy lawyer. She has worked in-house at Sussan Corporation and Tattersall’s and now assists small and medium businesses with import, export, leases, franchising, employment and general business advice as principal solicitor of Lynda Slavinskis Lawyers & Consultants. Lynda is on the Victorian Government’s Small Business Advisory Council.

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