International Treaties & Agreements Concerning Trademarks

A huge thanks to Trent from Smart Biz Blog for commenting on our recent Parallel Importing article and inspiring today’s post. We have previously written about international trademark registration, with some general information about the options available to secure trademark registration outside of Australia. Today we will focus more on particular agreements in place within certain territories and areas in so far as they relate to trademark protection.

Contrary to popular belief, if you have a trademark in Australia and wish to use/promote it in America you will still need to register your rights in the US. The Free Trade Agreement between our countries does not mean that your trademark is automatically protected in the USA. The Agreement does allow an extended term of protection for Copyright – which is different to a trademark, and suggests that the countries will work on making an easier system for other IP registration, such as reducing the differences in our IP laws etc.

Whilst an Australian trademark does not automatically provide rights in the USA, and generally speaking trademark registration is a country by country process, there are a few treaties around the world that will allow you to secure protection in multiple countries via a single application. The first is the Madrid Agreement and the Madrid Protocol. Australia is a member to the Protocol, which means eligible persons can file a single application seeking to register in any of the other Protocol members (of which there are over 80). However, this is a simplified filing system and not a single application to cover all countries. Each chosen country must still examine the trademark and provide their own results.

The Community Trademark

A community trademark covers the whole of the European Union through the filing of one application, and (hopefully) registration of one trademark. If successful, your rights by filing a community trademark are valid across all 27 member countries of the EU. It is an ‘all or nothing’ application though, meaning an issue because of one country could see the entire application failing. Filing in this manner will see your application examined against other community trademark applications and registrations, but also registrations within each of the EU member countries as national trademarks. Most of the EU members are also available as single country designations through the Madrid Protocol.

Benelux

This is a union covering Belgium, the Netherlands and Luxembourg. To secure protection in these countries you file an application designating Benelux and registration is then valid throughout all three countries. Again, Benelux is also available as a designation through the Madrid system.

ARIPO Treaty

A single application can be made for protection in contracting members to the Banjui Protocol of Marks, through the African Regional Intellectual Property Organisation. In this case, you can select any one or more of the member states. Unlike the community trademark for the EU, it’s not an ‘all or nothing’ situation. The organisation was established, essentially, to create a central point for resources and information concerning trademark registration in the African countries of Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania, Uganda and Zimbabwe.

OAPI Treaty

Also a regional treaty within Africa, providing for trademark processes in 16 French-speaking African nations by filing a single application via the Central office. The countries included are: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo Republic, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo.

Andean Pact

Relates to the Andean Community, which was formed by certain South American countries – Bolivia, Columbia, Ecuador and Peru. In this case, it is not an application system – you cannot file a single application under the Pact covering all countries and would need to make separate applications to own a trademark in all of the countries. The Pact was established to create some reciprical rights across the member countries. For example, if you were the first person to apply in a particular member country you could lodge an objection to a similar trademark becoming registered in other member countries.

The Paris Convention

The oldest of the international treaties around trademarks. Essentially, it aims to ensure that countries that have signed to the treaty share the same benefits amongst them, and that these are uniform across all signed parties. As just one example is the Convention Priority period, discussed in our earlier post – where an application who holds a trademark in one of the member countries may apply the convention priority in any of the other signatories.

The above is just some of the treaties and arrangements in place amongst multiple countries with regards to trademarks and intellectual property. Others include agreements that determine the classes of goods/services used by most countries as well as how images are classified, described and indexed/searched when they are included within logos.

If you are looking to protect your brand in multiple countries outside of Australia, where eligible, we would suggest using the Madrid Protocol system, as this provides for a simpler and less costly experience most of the time. If you have any questions, or would like to receive specific advice and estimates to protect your brand internationally, please contact us or send an email to info@mmwtrademarks.com.au (if you already have a trademark in Australia, please include your trademark number or a description of the trademark in your enquiry).