Anita Brown

Partner, Phillips Ormonde Fitzpatrick

Russell Waters

Partner, Phillips Ormonde Fitzpatrick

Using trade marks overseas

Last updated

1 July 2022

Overview of using trade marks overseas

Rights conferred by using and registering a trade mark in Australia do not extend to other countries. Similarly, a trade mark that has been registered overseas but not registered in Australia is not protected in Australia under the Trade Marks Act 1995 (Cth) (‘TM Act’). However, if a trade mark that has not been registered in Australia has acquired a reputation in Australia due to extensive use overseas, that reputation may confer protectable rights on the trade mark owner at common law.

Australia is a ‘first to use’ country, so that the first person to use a trade mark in Australia can claim ownership of a trade mark arising from that first use, and use this to defeat an application filed later. This applies even if the level of use is very low.

The majority of overseas countries operate on a ‘first to file’ principle, where prior use of a trade mark in that country cannot defeat an application filed by another person. Different countries have different requirements; in some, sufficient prior use to acquire a significant reputation may be a basis to oppose a later filed application, but in other countries a mark has to be ‘famous’ or very well known.

Australian trade mark owners who have goods manufactured overseas should consider seeking protection in the country of manufacture, particularly if it is a first to file country. This will avoid a third party registering the mark and then preventing the continued application of the mark to the manufactured goods in that country.

The Paris Convention

Australia is a signatory of the Paris Convention.

If protection of a trade mark is sought in another country within six months of applying to register the mark in Australia – and that country has either signed the Paris Convention or is a full member of the World Trade Organization – the filing date of the Australian application may be claimed as a priority date for the overseas application in that country.

This means that an overseas application may avoid the citation of an earlier application in that country if the Australian filing date is earlier still. By the same token, an application filed in Australia may claim priority from an application filed elsewhere, so that an application filed after an earlier application may have an earlier priority date when determining who filed ‘first’ in Australia.

The Madrid Protocol

Another international convention to which Australia is a signatory is the Madrid Protocol. Under this agreement, the owner of an Australian application or registration can use this as the basis for filing a single application for an International Registration that covers several designated countries or economic regions (e.g. the European Union) that are also signatories of the Madrid Protocol.

It is important to realise that despite its name, an International Registration does not confer protection to all countries, or even to all Madrid Protocol countries; it only covers the countries that are designated at the time of filing, or which are subsequently added to the registration. As each country or region imposes its own designation fees, and there are over 100 possible designations, the cost of designating all possible countries and regions is expensive.

After an International Registration is obtained, the International Bureau sends it to each of the designated countries, where it is examined under local law. Protection is only given in a designated country if the International Registration complies with local registration requirements. For example, protection may be refused if the mark is too similar to a trade mark already registered in the relevant country, or because the trade mark is considered descriptive under local criteria. If a trade mark is accepted after examination under local laws (or if any objections can be overcome), the International Registration is ‘protected’ in that country for as long as the International Registration is maintained. Renewal of the International Registration renews protection in each country in which the trade mark is protected.

Parallel importation

Where goods are manufactured and sold overseas, a trade mark may be applied to the goods by or with the consent of the trade mark owner in relation to goods not intended for sale in Australia. These goods may not meet Australian standards, or may be of a lower quality, or may be intended for sale at a lower price than the goods normally sold in Australia.

It is possible in such circumstances for a third party to purchase these goods overseas and then to import and sell the goods in Australia in competition with the trade mark owner’s normal channels of distribution in Australia. This is known as ‘parallel importation’. The goods may be referred to as ‘grey market’ goods.

Because section 123 of the TM Act provides that a trade mark is not infringed where it has been applied to, or in relation to the goods by, or with the consent of the trade mark owner, parallel importation does not infringe registered trade mark rights. Sale of grey market goods may still be prevented if they do not meet Australian standards, or if they are sold in a way that is misleading or deceptive, but not because such sale is an infringement of a registered trade mark.

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