THERE IS NO SUCH THING AS A “WORLD TRADE MARK” – WHY YOUR FILING STRATEGY IS KEY FOR BRAND SUCCESS

Olaf Kretzschmar, Managing Director ONE IP INTERNATIONAL PTY LTD

From all business accidents, the sudden requirement for rebranding, due to initially overlooking or wilfully neglecting attempts to obtain ownership of a brand name, a slogan, a logo or other forms of badges of origin by registering your goodwill as a trade mark, is one of the worst. Not only rebranding wipes away the overall appearance of a business in the public, but it also forces the relevant public and the existing customer to actively rewiring their brains by deleting an old thinking habit and search pattern, when looking for the business’ goods and services, identifying it amongst its competitors. It is said that people have an attention span of 20 seconds these days. In times of social media, a replacement of another “cool brand” is quickly found and rebranding triggers the need for building new reputation related to the new brand, even though the new brand continues to sell the same quality goods and offer the same cutting-edge services as the previous brand did for 20 years.

It is unfair, but in today’s world, it is a lot about customer’s perceptions. One does not change that for sure.     So, whether you are an entrepreneur, a business owner or the CEO of an Internationally operating company, you no doubt would want to prevent this disaster scenario from arising. Don’t worry, it even happens to the larger entities, if you think of Burger King in Australia. They successfully overcame a challenging rebranding situation and had to invest a lot more effort and marketing expenditure to get the company’s reputation back on track in Australia.

You may already know the value of having a registered trade mark in your home country. You are most likely also aware of the protection it provides for your business and brand as a whole, and the valuable intangible asset it becomes through constant maintenance over years or decades, or do you believe, “Apple” became the most valuable brand overnight, just like that and without proper trade mark protection in place? Think again. One can only imagine what the immediate perception of the Apple brand was like back in the ’80s when people were working out of a garage. Now, almost 40 years later in 2020, the success story continues and the ripened fruits can be harvested.   

Even though International trade marks were once only necessary for large scale businesses and corporations, we are now in 2020 and we are facing globalisation – a different story altogether, compared to back then. In today’s global marketplace, almost any business, especially a business in Australia with online exposure, should consider filing for an International trade mark. The rise of counterfeiters and cybersquatters in other countries, protecting your brand at your home-market and across the world, in all jurisdictions you are having business with or that are potential future markets, is more critical than ever before. Like so often in the business world, having a strategy in place is key. This applies in particular in relation to the protection of trade marks.

Firstly, you would like to ensure not to spend more than necessary for setting up the trade mark portfolio across multiple jurisdictions. No business has funds to waste. Money always matters – no matter what size the business or company has.

Secondly, you would like to ensure to obtain a return of investment, by ensuring the applications in all designated countries are actually granted and registrations are achieved, rather than losing the investment, upon refusal of your applications by the respective Trade Mark Office in a particular jurisdiction.

Thirdly, you need to be aware, not to infringe existing trade mark rights in several countries by applying for and the use of a deceptively similar name, slogan or logo. This could lead to a refusal of your application by the respective country’s Trade Mark Office, a trade mark opposition or infringement litigation action by a third party who believes that you are infringing upon existing trade mark rights.

Having said that. a strategic trade mark protection plan on a global scale will ensure your brand’s value will be managed by you and not by an imposter on the other side of the globe.

If you currently do business in another country, you’re considering expansion, or there’s a possibility your online presence will reach customers abroad, you may want to consider filing an international trade mark.

How to File an International Trade Mark Application

If you’ve recently registered your trade mark in Australia with Australian Trade Mark Office, you know the process can be tedious, and the thought of completing a trade mark application for each country you wish to register in may seem overwhelming. While there is no such thing as a global “world trade mark”, that would allow you to register it in every country in the world at one time, an international treaty, named the Madrid Protocol, has simplified the process a lot. The Madrid Protocol filing process allows you to file only one application, in one language, namely with the World Intellectual Property Organization, or WIPO, based in Geneva, Switzerland. which can be applied to the 92 countries affiliated with the Madrid Protocol, saving you time, money and stress.

As mentioned, you should have a strategy in place, before commencing any protection actions.

Safety first! - Secure your spot in your home country by filing a trade mark application in Australia as early as possible and take advantage of the application as a priority filing

Not only is a trade mark filing in Australia relatively inexpensive, compared to many other jurisdictions, it also has an important side effect on your business’ or company’s cashflow. Imagine, the filing of a trade mark application provides immediate trade mark protection against any identical or similar use of your brand name, slogan or logo for your goods and servicer and any goods or services, that are similar in nature, even though the registration process in Australia, by law, takes a minimum of 7.5 months to complete, leading to the registration of your trade mark. Regardless, your trade mark is immediately protected for ten years, renewable, right from the start, commencing with the filing date of your trade mark application in Australia. Immediately! You can start using the ?, which stands for an unregistered trade mark or trade mark in use. Once your trade mark is registered and you can use the ? sign, the registration certificate will have the filing date, as the date of commencement of trade mark protection. Consequently, the registration will be due for renewal ten years after the filing date of your trade mark. Having just submitted your trade mark application in Australia, it enables you to postpone International filings in any of the other 193 countries, where your current or potential future markets are for a period of six months, commencing with the filing date in Australia. It is called “priority filing” and enables you to prevail over any application, filed by another third party in any other country in the world, that is made between the 6 months period, kicked-off by your national trade mark application.

Decide on which countries are (potential) markets for you

Having filed your national Australian application leaves you with the opportunity to determine and test markets all over the world and to identify your future markets in Asia, Europe, North America and South America. You will agree, that it makes no commercial sense, nor is it commercially viable to file random applications across the globe and spend money on protection countries, where your company or business does not have one customer or you know, it will never enter the respective market.

Determining, which countries to register your trade mark in may seem like an overwhelming task. If you currently have an Overseas distributor or manufacturer, you will no doubt want to file there first. If you own any sort of online retail store or business, you will want to take a look at where you are currently generating customers, as well as the countries with large populations of your target market. For instance, the owner of a company with an online swimsuit store may want to consider registering in New Zealand before Russia.

Look ahead to where you want to be in the next few years. Are you planning to move your manufacturing overseas or roll out a new marketing strategy for Europe? Are you moving from a small storefront to a sole e-commerce business? Any country you hope to touch through your business in the coming years may be candidates for registration. You may also want to consult an experienced trademark attorney to discuss a possible defensive strategy, by registering your trademark in countries where counterfeiting is common.

In this growing digital age, it isn’t too far-fetched to think that a small coffee roaster in Sydney could have customers in Portugal or Germany. As your business plan evolves and expands, your trade mark strategy should expand as well. Be sure to be diligent in policing the use of your mark in Australia, as well as Internationally. A trade mark is a critical part of protecting your brand and its reputation, but only if you enforce your legal rights.

Trade Mark Filing with the World Intellectual Property Organization (WIPO)

Before the six-months priority filing period is going to come to an end, you have decided, on which corners of the world to send your brand. With the list of countries, all needly spread across 6 continents (considering there is no need to trade on Antarctica), it raises the question, whether you have to file multiple applications in various countries at the same time or if a more streamlined, time saving and efficient way of trade mark protection is available.

Once you have filed your basic trademark application with the Australian Trade Mark Office (IP Australia), you can submit an International application, which will be reviewed by WIPO and then forwarded to the respective member country in which you wish to establish protection of your trade mark. This application should be submitted by the same owner that submitted the original application in Australia. The goods and services provided with the mark must also match the original application, or be smaller in scope than what is being offered in Australia.

Multiple national filings – a useful and more cost-effective alternative in some cases, depending on your brand roll-out strategy

However, there are limitations to the Madrid Protocol. It does not cover all of the countries in the world. Notable exceptions are most South American countries along with most of the countries in the Middle East. For these countries, you will need to file an application with that respective country’s Trade Mark Office directly using a local attorney.

You should also consider, that it may not make any commercial sense and would be a waste of financial resources, to use the Madrid System, that charges you a significant statutory basic filing fee, to only cover two or three other countries, apart from your Australian national filing. In this case, the statutory filing fees, charged by the respective Trade Mark Offices in two or three other countries may still be well below the basic WIPO filing fee and it may be therefore the best option to file 2-3 individual and separate applications with those respective countries’ Trade Mark Offices.