At some point I’m planning to expand my brand overseas. When should I start thinking about trademarks?

I’m planning to expand my brand overseas at some point in the next couple of years. When should I start thinking about trademarks? Is there one place where I can trademark my business and its core products centrally, or will I have to do it in each country?

 

At the risk of sounding too much like a lawyer, the answer to your question, is “No, but a little bit of yes”.

 

Trademarks are ‘territorial’ – which means you need to register your trademark separately in each different country where you want protection.

 

In the bad old days (before the internet), this was a hugely expensive exercise, as you had to rely on the services of trademark attorneys in each different country (many of whom make Australian lawyers and trademark attorneys look inexpensive!).

 

Today, however, there is an international treaty involving 80 or so countries, called the Madrid Protocol, which allows you to file a single application from your home country (ie. Australia) that nominates all of the different participating countries where you want to register your trademark.

 

As well as benefits such as the ability to file one notice to update a change of address across all countries, and one payment to renew all your overseas registrations in one go, you are also able to make all your payments in Australian dollars.

 

And thanks to the strength of the Australian dollar, the cost is substantially lower than it used to be.

 

The basic filing cost is about $800 and you then pay a different fee for each country where you want your trademark registered.

 

For some countries (eg. France, Germany) this is as low as $100. Other countries (eg. the UK and the USA) charge from $300 to $400.

You can also nominate the whole of the EU, for example, for just $1,400. If you use a TM attorney to do all of this for you (which is advisable), you will also have to pay their fees. (My charge for doing this, for example, is $395 + GST.)

 

In terms of timing, you first need to file for a trademark in your home country. Provided you file the international application within six months of filing in Australia, the date of protection is backdated to the date on which you filed your Australian application.

 

But there is no need otherwise to file the international application straight away.

 

In terms of when you should do this, the “legal response” is that you should do this as soon as possible, but of course in the real world this may not be possible from a pragmatic or financial perspective.

 

There is nothing to stop you from registering your Australian trademark, than waiting a year or more to gauge your success before filing in overseas countries – although the danger is that someone will see the success of your trademark in Australia and start trading, or register your brand, in their own country if you have not done so first.

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