How to Protect Your Trademark Internationally: Your Brand's Global Shield

May 16, 2025

Why International Trademark Protection Matters

Don't Let Copycats Rain on Your Parade


Think your Aussie trademark is enough when you're selling snag sizzlers in Singapore or your cool surfwear hits the beaches of Bali? Think again! Failing to register your trademarks abroad is like leaving the back door of your business wide open for sneaky copycats and counterfeiters.


The Risks Are Real, Mate:


  • Brand Blurring Mayhem: Imagine a local knock-off using a similar name or logo, confusing your hard-earned customers. This can dilute your brand's distinctiveness and erode trust faster than a politician's promise.
  • Lost Sales & Revenue Drain: Counterfeit goods can flood the market, stealing your sales and tarnishing your reputation with inferior quality. That's revenue going straight into the pockets of dodgy operators. ๐Ÿ˜ 
  • Legal Headaches & Costly Battles: Trying to fight infringement in a foreign country without prior registration can be a legal nightmare, costing you time, money, and a whole lot of stress. Prevention is always better (and cheaper!) than cure.


Case Study: When Global Ambitions Hit a Trademark Wall ๐Ÿงฑ

Remember that Aussie craft brewery, "Outback Ales"? They started small but their unique beer flavours and kangaroo logo were a hit. They began exporting to the US, thinking their Aussie registration had them covered. Wrong! A Texan brewery had already registered a very similar name and logo. Outback Ales faced a costly legal battle and had to rebrand their US products, losing valuable time and market recognition. This is a classic example of why thinking global from the get-go is crucial.



The Madrid Protocol – How It Works: Your Passport to Global Trademark Protection


Think of the Madrid Protocol as a streamlined system that allows you to seek trademark protection in a large number of countries by filing one single application with your national or regional trademark office. Instead of tackling each country's bureaucracy individually, the Madrid System offers a more centralised and cost-effective route. It's like getting a global stamp on your trademark without having to visit every customs office yourself!


What Exactly Is This Madrid Magic?

The Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO). It provides a mechanism for trademark owners to simultaneously seek protection in multiple member countries through a single application process. Your "basic application" (the trademark registration or application in your home country, like Australia) forms the foundation of your international application.


Who's Playing the Game? Countries Covered by the Madrid System

The Madrid System boasts a significant and ever-growing membership, covering over 130 countries. This includes major players like the United States, the European Union, China, Japan, South Korea, and many more. While it doesn't cover every single country on the planet, it offers a massive head start for businesses looking at multiple international markets. You can designate which of these member countries you want your trademark protected in with your single application.


How to Hitch Your Trademark to the Madrid Wagon: The Application Process


  1. Start at Home: You must have a registered trademark or a pending trademark application in your home country (in our case, Australia). This is your springboard for the international application.
  2. File Through IP Australia: You submit your international application through IP Australia. They will certify it and forward it to WIPO.
  3. WIPO Works Its Magic: WIPO formally examines your application and records it in the International Register. They then notify the countries you've designated.
  4. National Examination: Each designated country then examines your trademark according to its own national laws. They can either grant protection or raise objections.
  5. International Registration: If approved by the designated countries, your trademark is recorded in the International Register and has the same effect as a national registration in those countries.


Easy as throwing a boomerang, right? Well, maybe not quite that simple, but certainly more streamlined than applying to each country individually!


Differences Between Madrid Protocol & National Registrations: The Global Trademark Showdown


So, you've got two main contenders in the ring when it comes to protecting your trademark internationally: the Madrid Protocol and applying directly in each country you're interested in. Let's see how they size up:


Madrid Protocol:

Pros:

  • Simplicity & Convenience: One application, one language (usually English, French, or Spanish), and one set of fees to WIPO. This can save you a significant amount of administrative hassle.
  • Cost-Effective (for Multiple Countries): If you're targeting protection in several countries, the Madrid Protocol can often be more budget-friendly than filing individual applications in each.
  • Centralised Management: Renewals and changes to your registration (like changes of address or ownership) can be managed centrally through WIPO, simplifying things down the track.
  • Phased Expansion: You can add more countries to your international registration later on.

Cons:

  • Reliance on Home Registration: Your international registration is dependent on your basic home country application or registration for the first five years. If your home registration is cancelled within this period, your international registration could also be affected.
  • Not Universal Coverage: Not all countries are members of the Madrid System, so for some key markets, you'll still need to file nationally.
  • National Examination Still Applies: While the application is centralised, each designated country still examines your trademark according to their own laws, and they can still refuse protection.


National Registrations:

Pros:

  • Direct Control: You have more direct control over the application process in each country and can tailor your application to specific local requirements.
  • Flexibility in Non-Member Countries: This is your only option for protecting your trademark in countries that aren't part of the Madrid System.
  • Independent of Home Registration: Your registrations in other countries aren't tied to the fate of your home country registration after it's granted.

Cons:

  • Complexity & Administrative Burden: Dealing with the เค…เคฒเค—-เค…เคฒเค— (different) rules, languages, and procedures of each country can be time-consuming and complex. ๐Ÿคฏ
  • Higher Costs (for Multiple Countries): Filing and maintaining individual registrations in multiple countries can quickly become very expensive due to separate application fees, translation costs, and local agent fees.
  • Decentralised Management: Managing renewals and changes across multiple national registrations can be a logistical headache.


When to File Directly in a Country vs. Using Madrid: Making the Call

  • Go Madrid If: You're looking for protection in multiple Madrid System member countries, want a more streamlined process, and are mindful of costs.
  • Go National If: You're targeting countries that aren't Madrid Protocol members, have specific local requirements to address, or want independent registrations from the get-go. Sometimes, a combination of both strategies might be the smartest move, depending on your target markets.


How to Apply for an International Trademark: Your Roadmap to Global Protection


Here’s a simplified step-by-step guide to navigating the Madrid Protocol application process:


  1. Get Your Home Ducks in a Row: As we mentioned earlier, you need a basic Australian trademark application or registration as your foundation. Make sure all the details are accurate and up to date. This is your launching pad! ๐Ÿš€
  2. Decide Where You Want to Play: Identify the specific Madrid Protocol member countries where you want trademark protection. Do your market research and target the countries where your business has a presence or where you plan to expand.
  3. Prepare Your Application: You’ll need to provide details about your trademark, the goods and services it covers (using the international Nice Classification system), and the designated countries. IP Australia will have the specific forms and requirements.
  4. File Through IP Australia: Lodge your international application with IP Australia. They will review it for compliance with the Madrid Protocol requirements and certify it before sending it on to WIPO. Think of them as your trusty guides in this process.
  5. WIPO Takes Centre Stage: The World Intellectual Property Organization (WIPO) in Geneva will formally examine your application for any irregularities. If everything is in order, WIPO will record your trademark in the International Register and publish it in the WIPO Gazette. They'll also notify the countries you've designated.
  6. National Examination in Designated Countries: Now, each of the countries you’ve selected will examine your trademark according to their own national trademark laws. This is where they’ll check if your mark conflicts with existing trademarks or meets their local requirements.
  7. Grant or Refusal: Each designated country will then issue a decision – either granting protection or refusing it (totally or partially). If protection is granted, your trademark will have the same status as a nationally registered trademark in that country.
  8. International Registration Certificate: Once the process is complete (and hopefully with positive results in your chosen countries!), WIPO will issue you an International Registration Certificate. This is your golden ticket, proof of your international trademark protection.


Costs & Expected Timeline: The Nitty-Gritty Numbers ๐Ÿ’ฐ and the Waiting Game

  • Costs: The fees involved in a Madrid Protocol application include a basic fee payable to WIPO, supplementary fees per designated country, and potentially individual fees for certain countries. IP Australia may also have its own handling fees. The total cost will depend on the number of countries you designate. It's generally more cost-effective than multiple national filings, especially for a larger number of countries.
  • Timeline: The timeframe can vary depending on the examination processes in each designated country. It can take anywhere from 12 to 18 months (or even longer) for all the examinations to be completed. Some countries might be quicker than others. Patience is key, mate!



Protecting a Trademark in the European Union: Your Passport to a Continent


If your business has its sights set on the European market, understanding the European Union Intellectual Property Office (EUIPO) is crucial. Think of EUIPO as the central authority for trademarks and designs across the entire European Union. Getting an EU-wide trademark can be a game-changer, offering protection in all 27 EU member states with a single application! It's like hitting a whole flock of seagulls with one scone!


How EUIPO (European Union Intellectual Property Office) Works: One-Stop Shop for EU Trademarks

EUIPO, based in Alicante, Spain, handles the registration of European Union Trade Marks (EUTMs), formerly known as Community Trade Marks. Here's the gist of how it operates:

  • Single Application, Wide Coverage: You file one application with EUIPO, in one language, and pay one set of fees to get trademark protection across all EU member states. This simplifies things massively compared to applying in each country individually.
  • Examination Process: EUIPO examines your application for absolute grounds of refusal (e.g., if the trademark is descriptive or generic). They also conduct a search for earlier conflicting EU trademarks.
  • Opposition Period: Once your application is published, there's a three-month period where owners of earlier trademarks in the EU can oppose your registration. This is where potential brand clashes are often sorted out.
  • Registration: If your application sails through examination and any opposition period, your EUTM is registered, granting you exclusive rights across the entire EU.
  • Enforcement: A registered EUTM can be enforced in all EU member states through the national courts of each country.


Benefits of EU-Wide Trademark Protection: A Sweet Deal!

  • Broad Market Access: One registration covers a massive market of hundreds of millions of consumers. Talk about bang for your buck!
  • Cost Efficiency: For protection across multiple EU countries, an EUTM is generally more cost-effective than pursuing individual national registrations.
  • Simplified Management: Renewing and managing one EU-wide trademark is much easier than dealing with multiple national registrations.
  • Enhanced Brand Recognition: A single, consistent trademark across the EU can strengthen your brand identity and recognition.
  • Strategic Advantage: An EUTM can be a valuable asset for licensing, franchising, and expanding your business within the European Union.


However, it's worth remembering that an EUTM covers all EU countries. If your trademark faces an objection or refusal in even one member state, the entire application could be in jeopardy. So, thorough clearance searches before applying are crucial!


Registering a Trademark in China, India & Emerging Markets: Navigating the Global Frontier


Venturing into markets like China, India, Brazil, and Russia can offer tremendous opportunities, but when it comes to trademarks, you need to be extra savvy. Their legal landscapes can differ significantly from what you might be used to back home.


Unique Challenges in China's First-to-File System: Fastest Finger Wins?

China operates on a first-to-file trademark system. This means that whoever files a trademark application first generally has the stronger claim, even if someone else was using the brand earlier. This is a critical difference from many other countries (like Australia) where prior use can play a significant role.


  • Act Fast, Think Faster: If you're serious about the Chinese market, registering your trademark early should be a top priority. Don't wait until you're already selling there!
  • Bad Faith Registrations: Unfortunately, the first-to-file system can sometimes lead to "trademark squatting," where someone registers your brand name or logo in bad faith, hoping to sell it back to you for a hefty price. Vigilance and early filing are your best defenses.
  • Language Matters: Consider registering your trademark in Chinese characters as well as the Roman alphabet version. This can help prevent confusion and protect your brand more effectively in the local market.


Trademark Protection Tips for India, Brazil, Russia: Local Nuances ๐ŸŒถ๏ธ

  • India: India's trademark law recognises prior use, but registration provides stronger rights and easier enforcement. Be prepared for a potentially lengthy examination process and the possibility of opposition from existing trademark holders.
  • Brazil: Brazil also operates on a first-to-file system. Trademark applications are examined for distinctiveness and potential conflicts. It's wise to conduct thorough searches before filing.
  • Russia: Russia's trademark system has undergone changes in recent years. It's crucial to ensure your application complies with current regulations and to monitor for potential infringement.


General Tips for Emerging Markets:

  • Local Expertise is Key: Engaging experienced local trademark attorneys or agents is highly recommended. They understand the local laws, procedures, and cultural nuances.
  • Thorough Clearance Searches: Before filing, conduct comprehensive trademark searches in the relevant country's registry to identify any potential conflicts.
  • Monitor the Market: Once your trademark is registered, actively monitor the market for any signs of infringement or counterfeiting.
  • Be Prepared for Enforcement Challenges: Enforcing your trademark rights in some emerging markets can be more complex than in more established jurisdictions. Be prepared to take legal action if necessary.


Navigating trademark protection in these diverse markets requires a proactive and informed approach. Understanding the local rules of the game is the first step to securing your brand's success on the global stage.



How to Handle International Trademark Infringement: When Copycats Come Calling


Discovering that someone is using your trademark overseas without your permission can be infuriating and damaging to your brand. Knowing how to react swiftly and strategically is crucial to protect your rights and your bottom line.


What to Do If Someone Is Using Your Trademark Abroad: Your First Line of Defence

  1. Gather Evidence, Mate! The first step is to collect as much evidence as possible of the infringement. This might include screenshots of websites, photos of the infringing products, details of the seller, and any other relevant information. The more proof you have, the stronger your position.
  2. Seek Local Legal Counsel: This is where having a good trademark lawyer in the country where the infringement is occurring is absolutely essential. They will understand the local laws and procedures and can advise you on the best course of action. Don't try to navigate this maze on your own!
  3. Cease and Desist Letter: Your lawyer will likely send a formal "cease and desist" letter to the infringer, demanding that they stop using your trademark immediately. This can sometimes be enough to resolve the issue without further legal action.
  4. Consider Mediation or Negotiation: Depending on the situation, attempting to resolve the dispute through mediation or negotiation might be a quicker and less costly option than going straight to court.
  5. Legal Actions & Enforcement Options: Taking Them to the Sumo Ring ๐Ÿคผ


If the cease and desist letter and other attempts at resolution are unsuccessful, you may need to consider taking legal action. The specific options available will depend on the laws of the country where the infringement is taking place, but they can include:

  • Injunctions: A court order that legally prohibits the infringer from continuing to use your trademark.
  • Damages: Seeking financial compensation for the losses you've suffered as a result of the infringement. This can include lost profits and damage to your brand reputation.
  • Seizure of Counterfeit Goods: In some cases, you can obtain a court order to seize and destroy the infringing goods.
  • Customs Enforcement: You can work with customs authorities in some countries to prevent the import of counterfeit goods bearing your trademark.

Important Considerations:

  • Speed is Key: The longer the infringement goes on, the more damage it can cause to your brand. Act quickly!
  • Costs Can Vary: Legal proceedings in foreign countries can be expensive. Be prepared to invest in protecting your rights.
  • Enforcement Can Be Challenging: Even if you win a court case, enforcing the judgment in another country can sometimes be difficult.


Dealing with international trademark infringement is a serious business. Having a proactive strategy for monitoring your trademarks globally (which we'll touch on later) can help catch these issues early.


How Long Does an International Trademark Last? Playing the Long Game


Think of your international trademark registration like a driver's license – it's got an expiry date and needs to be renewed to stay valid. Here's the lowdown on the timelines and maintenance:


Renewal Timelines & Maintenance Requirements: Keeping Your Protection Alive

  • Initial Term: An international trademark registration obtained through the Madrid Protocol is initially valid for ten years. This ten-year period starts from the date of the international registration.
  • Renewals: To keep your international trademark protection going, you need to renew your registration every ten years. You can renew directly through WIPO. It's crucial to mark these renewal dates in your calendar to avoid your protection lapsing. Losing your trademark rights due to a missed renewal would be a real tragedy!
  • National Registrations: If you've opted for direct national filings in some countries, the renewal periods can vary. Some countries have ten-year terms, while others might have different durations. You'll need to keep track of the specific renewal dates and procedures for each country. This is where the centralised management of the Madrid Protocol can be a real advantage.
  • Maintaining Use: In some countries, including the United States, you may need to provide proof of use of your trademark at certain intervals after registration to maintain your rights. While the Madrid Protocol itself doesn't have a global use requirement, the national laws of the countries you've designated might. So, it's essential to be aware of these local requirements.

Key Takeaway:

  • International trademark registrations under the Madrid Protocol need to be renewed every ten years through WIPO.
  • Direct national registrations may have varying renewal periods and could have proof of use requirements.


Staying on top of these renewal deadlines and any use requirements is vital to ensure your international trademark protection remains in force. It's all part of playing the long game and safeguarding your brand's global future.


Costs of International Trademark Registration: Counting the Pennies for Global Protection


The costs of international trademark registration can vary depending on several factors, primarily the route you take (Madrid Protocol vs. direct national filings) and the number of countries you're targeting. Let's break down the main expenses:


Madrid Protocol Fees vs. Direct Country Filings: The Budget Breakdown


Madrid Protocol Costs:

  • Basic Fee (WIPO): There's a standard fee payable to WIPO for the international application itself.
  • Supplementary Fee (per country): For each designated country, there's usually a supplementary fee.
  • Individual Fees (certain countries): Some countries, like the United States and Australia, charge their own individual fees in addition to the basic and supplementary fees.
  • Handling Fee (IP Australia): IP Australia may also charge a fee for processing your international application.
  • Potential Agent Fees: If you use a trademark attorney or agent to help you with the application, they will have their own professional fees.


Direct Country Filing Costs:

  • Application Fees (per country): Each country has its own set of application fees. These can vary significantly.
  • Translation Costs: You'll likely need to translate your trademark application and supporting documents into the official language(s) of each country. Translation costs can add up quickly.
  • Local Agent Fees: In many countries, you'll need to use a local trademark attorney or agent, and their fees can vary.
  • Renewal Fees (per country): Remember that you'll need to pay separate renewal fees in each country to maintain your registrations.


General Observations on Cost:

  • Madrid Protocol can be more cost-effective when you're seeking protection in a larger number of countries because you're essentially bundling the initial application process.
  • Direct national filings might be more suitable and potentially cheaper if you're only targeting a very small number of countries, especially if they don't have high individual fees under the Madrid Protocol.
  • Long-term costs need to be considered, including renewal fees in each system. The centralised renewal of the Madrid Protocol can save administrative costs over time.


It's wise to get a clear estimate of costs based on your specific target countries before you decide on the best approach. Consulting with a trademark attorney can help you navigate these financial considerations and make the most cost-effective choices for your business.


How to Monitor & Enforce Trademarks Globally: Staying Vigilant in the Global Arena


Registering your trademarks internationally is a fantastic first step, but it's not a "set and forget" situation. You need to actively monitor the global landscape to catch any potential infringements early. Think of it as keeping a watchful eye on your flock of sheep – you want to spot any wolves in disguise before they cause trouble!


Tools & Services for Watching for Infringement: Your Global Surveillance Kit

  • Trademark Watching Services: There are specialised commercial services that monitor trademark registers around the world for new applications that are similar to your registered marks. They can send you alerts if potential conflicts arise. This is like having a dedicated early warning system.
  • Online Monitoring Tools: Keep an eye on online marketplaces, social media platforms, and domain name registrations for potential misuse of your brand. Regular searches for your brand name and variations can help you spot trouble.
  • Customs Monitoring: In some countries, you can register your trademarks with customs authorities to help prevent the import of counterfeit goods. They can seize suspicious shipments at the border.
  • Engage Local Partners: If you have distributors or licensees in other countries, they can be your eyes and ears on the ground, alerting you to any potential infringement in their local markets.


Common Issues with Counterfeit Goods: The Shadowy Side of Global Trade

Counterfeiting is a significant problem in international trade and can severely damage your brand's reputation and bottom line.

Be particularly vigilant for:


  • Look-alike products: Goods that mimic your brand's packaging and appearance to deceive consumers.
  • Inferior quality: Counterfeit goods are often made with substandard materials, which can tarnish your brand's image.
  • Online sales of fakes: The internet has made it easier for counterfeiters to reach global consumers.


Taking Action:

If you discover potential infringement or counterfeiting, the steps we discussed earlier (gathering evidence, seeking local legal counsel, sending cease and desist letters, and potentially taking legal action) will come into play.

Staying vigilant and proactive in monitoring your trademarks globally is an ongoing effort, but it's essential to protect your brand's value and integrity in the international marketplace.



Differences in Trademark Laws by Country: A Global Legal Tapestry


While there are international agreements and systems like the Madrid Protocol that aim to streamline things, each country ultimately has its own set of trademark laws and regulations. These differences can impact everything from what can be protected to how your rights are enforced.


U.S. vs. EU vs. China Trademark Rules: A Snapshot of Key Players ๐Ÿ‡บ๐Ÿ‡ธ๐Ÿ‡ช๐Ÿ‡บ๐Ÿ‡จ๐Ÿ‡ณ

  • United States (USA): The US operates on a use-based system, meaning that while registration provides significant benefits, prior use of a trademark in commerce can establish rights. They also have specific "intent-to-use" applications, allowing you to reserve a trademark before you actually start using it. Proof of use is required to maintain a registration.
  • European Union (EU): As we discussed earlier, the EU offers a unitary trademark system (EUTM) providing protection across all member states. Their examination process considers both absolute and relative grounds for refusal. An EUTM registration is based on filing, not necessarily prior use across the entire EU.
  • China: China follows a first-to-file system, as we've highlighted. This puts a strong emphasis on early registration. They also have specific rules regarding the registrability of certain types of marks and a more rigorous examination process. Registering your trademark in Chinese characters is highly recommended.


Other Interesting Variations:

  • Australia: Like the US, Australia has a system that considers both use and registration. They also have a unique "certification mark" system to indicate that goods or services meet certain standards.
  • Canada: Canada's trademark system has undergone recent changes aligning it more closely with international practices. Prior use is relevant, and registration provides strong national rights.
  • India: India's laws recognise prior use, but registration offers better enforcement options. They also have a system for "well-known trademarks" that receive broader protection.


Key Takeaways:

  • Use vs. Filing: Some countries (like the US) consider prior use as a basis for trademark rights, while others (like China) heavily favour the first to file an application.
  • Examination Process: The thoroughness and criteria for examining trademark applications can vary significantly between countries.
  • Language Requirements: Some countries may require trademarks to be registered in their local language.
  • Enforcement Procedures: The legal processes for enforcing trademark rights differ from country to country.


Understanding these differences is crucial when developing your international trademark strategy. What works in Australia might not be the best approach in China, and vice versa. This is where local legal expertise becomes invaluable.


What Happens If a Trademark Application Is Denied? Don't Throw in the Towel Yet!


Getting a rejection notice for your international trademark application can be disheartening, but it doesn't necessarily mean it's game over. Here's a look at the common reasons for refusal and what you can do about it:


Appealing International Trademark Rejections: Fighting for Your Rights

Reasons for rejection can vary depending on the country, but some common ones include:

  • Likelihood of Confusion: The examining authority believes your trademark is too similar to an existing registered trademark and could confuse consumers.
  • Descriptiveness: Your trademark is considered merely descriptive of the goods or services it covers and lacks distinctiveness. For example, trying to trademark "Crispy Apples" for apples.
  • Genericness: Your trademark has become a generic term for the goods or services (think "escalator" or "aspirin").
  • Absolute Grounds for Refusal: The trademark violates public policy or morality, or it's deceptive.


Your Options When Facing a Rejection:

  1. Review the Grounds for Refusal Carefully: Understand exactly why your application was rejected. The official notification will provide the reasons.
  2. Seek Local Legal Advice (Again!): This is crucial. A trademark attorney in the country that issued the rejection will be best placed to advise you on your options under their local laws.
  3. File an Appeal or Request for Review: Most countries have a process for appealing a trademark examiner's decision or requesting a review of the rejection. Your local attorney can help you prepare and file the necessary documents and arguments.
  4. Amend Your Application: In some cases, you might be able to overcome the rejection by amending your application. This could involve narrowing the scope of goods or services, providing evidence of distinctiveness through use, or modifying the trademark itself (if acceptable).
  5. Respond to the Objections: You'll typically have a specific timeframe to respond to the rejection. Missing this deadline can result in your application being abandoned.
  6. Consider Alternative Trademarks: If the objections are insurmountable, you might need to consider developing and applying for a different trademark. This can be frustrating, but sometimes it's the most practical solution.


Important Considerations:

  • Deadlines are Critical: Pay close attention to all deadlines for responding to rejections or filing appeals.
  • Evidence is Your Friend: If the rejection is based on a lack of distinctiveness, providing evidence of how consumers recognise your brand (e.g., through sales figures, advertising, and customer testimonials) can be persuasive.
  • Don't Give Up Easily (But Be Realistic): While it's important to fight for your brand, be prepared to accept that some rejections might be final. Your attorney can provide an honest assessment of your chances.


Getting a trademark rejection isn't the end of the road. With the right advice and a strategic approach, you might still be able to secure protection for your brand in that market.


Conclusion & Next Steps: Secure Your Brand's Global Future Today!


Protecting your trademark internationally isn't just a legal formality – it's a strategic imperative for any business with global ambitions. Failing to secure your brand in foreign markets is like leaving your prized possessions unguarded in a crowded marketplace. The risks of brand dilution, lost revenue, and costly legal battles are real.

Whether you choose the streamlined path of the Madrid Protocol or opt for direct national filings, taking proactive steps to protect your intellectual property is an investment in your brand's long-term success and global recognition.


So, what are the next steps for your business?

  • Assess Your Global Markets: Identify the countries where your brand has a presence or where you plan to expand.
  • Consider Your Protection Strategy: Weigh the pros and cons of the Madrid Protocol versus direct national filings based on your target markets and budget.
  • Conduct Thorough Trademark Searches: Before you file any applications, make sure your chosen trademark is available in your target countries.
  • Seek Expert Legal Advice: Engaging an experienced trademark attorney who specialises in international law is invaluable. They can guide you through the complexities of different legal systems and help you develop a robust protection strategy.
  • Act Early and Stay Vigilant: Don't wait until it's too late. Register your trademarks early in your global expansion journey and actively monitor the market for any potential infringement.


๏ปฟYour brand is your identity, your promise to your customers. Protecting it on the global stage is no longer a luxury – it's a necessity in today's interconnected world. Take the first step today and build a strong global shield for your brand.


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The integration of artificial intelligence (AI) into various industries is not just transforming operational efficiencies; it's also raising critical questions around intellectual property (IP) rights and how business can leverage the algorithm to create new assets. As AI continues to evolve, its adoption across industries presents unique opportunities not only in terms of managing value for creations by also creating assets from the output of Intellectual Property which AI can create. This week let's explore the intersection of AI and IP in the following two industries:
By Gareth Benson February 12, 2024
Whilst we live in a vastly digital world computers can not enter contracts - yet. Contracts have been used in ancient civilizations such as Egypt, Greece, and Rome, often written on clay tablets or papyrus used to establish agreements for the sale of goods, services, or property. In the 16th and 17th centuries, English common law developed the concept of a "consideration" as an essential element of a contract. This means that both parties have to exchange something of value for the contract to be legally binding. This still remains true today. It also must have Legal Capacity which means that two human beings must have the legal capacity to enter a contract. Until the law develops to recognise Artificial Intelligence as having distinct legal personality these are 5 key elements of constructing a contract between human beings or businesses with legal capacity. 1. Offer: One party makes an offer to another party. This offer must be definite and clear in its terms and conditions. 2. Acceptance: The other party accepts the offer, either expressly or by conduct. The acceptance must be unqualified and must correspond to the terms of the offer. 3. Consideration: There must be a benefit or detriment that is exchanged between the parties. This is known as consideration and is usually in the form of money, goods, or services. 4. Legal capacity: Both parties must have the legal capacity to enter into the contract. This means they must be of legal age, mentally competent, and not under duress or coercion. 5. Legal purpose: The contract must be for a legal purpose. Contracts that are illegal or against public policy are not enforceable. Myself and colleague Conni Warren will be exploring the fundamentals of corporate writing and contracts for success next week in Darwin. If you would like to join and learn of 5 further fundamentals of contract success. I have posted a link to the eventbrite below. All beings and open artificial intelligence, most welcome!
By Gareth Benson January 12, 2024
This past week as I commence lecturing at Charles Darwin University I have been remarking on how the Actors and Screen Writers Guild #strikes shutting down Hollywood are the first signs of unrest, which may become commonplace as, we negotiate a new world with #artificialintelligence (AI). The further development of AI, through the advent of both streaming services and the ability now to replicate or replace actors is challenging the way content is created and reshaping the way people work in various industries, including the entertainment sector. This evolution has significant implications for contracts, bargaining, and strikes in possibly every industry. As AI technologies advance, they have the potential to generate original content, mimic human performances, and automate certain aspects of the creative process. This raises questions about ownership, intellectual property rights, and the role of human artists and workers in the face of AI's capabilities. #contractlaw negotiations in the entertainment industry are now grappling with issues related to AI. Key considerations include determining ownership and control over AI-generated content, defining fair compensation and residuals for actors and artists in AI-driven productions, and addressing the ethical and legal implications of AI's impact on creative output. Bargaining power becomes crucial as artists, actors, and their representatives seek to protect their rights and ensure a fair share of the benefits derived from AI-generated content. On the other hand, studios and production companies are navigating the integration of AI technologies while addressing concerns surrounding job displacement, creative control, and financial considerations. Strikes, such as the current writers and actors' strike, may arise as a means for artists and actors to assert their demands and negotiate for fair working conditions, compensation, and rights in the context of AI-driven productions. These strikes can serve as a catalyst for discussions and reforms in other industries, influencing the way contracts are structured and how workers are protected in the evolving landscape of AI technology. Ultimately, the development of AI and its impact on content creation and employment necessitate ongoing dialogue, negotiation, and adaptation of contractual frameworks. The way contracts are structured, bargaining takes place, and strikes are employed will play a central role in shaping the future of AI and the working dynamics of various industries, including the entertainment sector. As a contract lawyer and lecturer I will be monitoring this space closely, and also in how we collectively can make more efficient agreements based on sound principles of agreement. The next question: can we negotiate contracts with AI run entities? Food for thought. ๐Ÿ’ก๐Ÿค–๐Ÿค”
By Gareth Benson December 12, 2023
Stopping all stations. Reflections from the World Commerce & Contracting conference. Participating in a global challenge on the use of Chat GPT in contract negotiations and in discussion with President Tim Cummins and CEO Sally Guyer at their conferene in Melbourne this week. It’s fair to say that A.I is here to stay. My reflections on the challenge: ๐Ÿ› ๏ธ๐Ÿ˜€ Efficiency: the use of ChatGPT can assist preparation for problem analysis breaking complex problems down and offering strategies, including questions to commence negotiations. ๐Ÿ› ๏ธ๐Ÿ˜€ Context counts: using this data and applying human context to the problem counts, there is a high duty of care to ensure application of the solution is appropriate and works. ๐Ÿ› ๏ธ๐Ÿ˜„ Communication is key: in the context of human negotiation communication is still paramaount to arrive at human resolutions. Robots will not replace this at any time soon. Human problems require, human communication and negotiation. Also it was found that our team who used ChatGPT performed better than those who did not ๐Ÿค”๐Ÿ› ๏ธ A report published by APAC shared reflections from the global community with regard to the use of A.I in the contracting process from 70 000 contract professionals from around the world. It reveals that 20 percent of workforce are already implementing generative A.I tools, 9 percent in Australia. There will be a competitive advantage for those that embrace these tools. Personllay I believe across industries that this could amount to a Fifth Industrial Revolution, given that entire industries, supply chains and jobs will be displaced and replaced. Contracting is just one part of this process. It’s good that we are having real and thorough discussion about it’s impact. It’s what humans do ๐Ÿ˜„ Wonderful to see Melbourne alive again with events bringing the city back to life!
By Gareth Benson November 12, 2023
I recently had the privilege of supporting Leigh Carnall of Civil Tech Solutions, whoose application of Artificial Intelligence in civil engineering for 3D surveying is inspiring. Leigh's innovative use of AI is set to revolutionise the way we perceive and navigate Northern Territory roads through cutting-edge 3D mapping technology. The foundation of all commercial deals are well written agreements. Our collaboration with Leigh underscored the pivotal role that a well-crafted contract plays in ensuring a clear commercial outcome. One of the key lessons learned was the critical importance of an agreements intellectual property provisions. As we assisted Leigh review this contract, our focus was on ensuring that Leigh had the necessary intellectual property rights to propel his business forward using Artificial Intelligence hardware. The 3D mapping tool's potential lay not only in its current applications but also in the treasure trove of data it could generate. We ensured that Leigh had full access and rights to leverage this data for future commercial endeavors. This experience reinforced the notion that contracts are more than legal documents; they are strategic tools for entrepreneurs like Leigh to build, protect and leverage their businesses. In the digital economy, where innovation is the currency of success, having robust intellectual property provisions are paramount. I’ve been passionate to share these insights in my book “Idealogoly: a compass to intellectual property success” which launched at the Darwin Innovation Hub over two years ago. It's a guide for those navigating the digital economy, offering practical advice on building, protecting, and leveraging ideas in this dynamic landscape where A.I is set to transform many different industries even further. I am focussing on the application of A.I in contracts this week in a series of posts for LinkedIn. Here's to the visionaries like Leigh Carnall whose application of AI and innovation in civil engineering is set to reshape his industry. If you're navigating the digital terrain with contracts and IP or passionate about the intersection of technology and business, I welcome you to join this conversation.
By Gareth Benson October 12, 2023
Last year I had the pleasure of advising US artist, Kris Kashtanova, during a challenging twist in her Intellectual Property journey. Kris is the author of the graphic novel "Zarya of the Dawn," an 18-page narrative set in a futuristic, deserted Manhattan, featuring a character inspired by the actress Zendaya. Beyond its captivating storytelling, Kris's work was produced with the assistance of of artificial intelligence. She asked me for advice in how to protect herself and the intellectual property in her creative output after her work was rejected by the US copyright office. Kris first achieved a significant milestone when she secured copyright in the work which could have been seen as a win for artists in the emerging world of AI-generated art. Kris took to social media, declaring that this legal protection meant artists could now safeguard their AI art projects, offering them the recognition and security they deserved. However, the elation was short-lived. In a surprising turn of events, the US Copyright Office reversed its decision in February, making Kris Kashtanova the first person in the country to lose legal protection for AI art. The abrupt change left both Kris and the artistic community grappling with uncertainty. To this point the US Copyright office has upheld that the writing of the novel could be protected in copyright, however the midjourney images can not as they are not considered “Human Authorship”. Since my initial advice one crucial takeaway from this experience is the recognition of the power of contracts in safeguarding the interests of IP owners, even when copyright registration might prove elusive. With industries now able to embrace generative A.I tools such as publishing, marketing and content creation business owners must proactively use contracts to establish ownership and license the output of their AI creations. Kris's journey underscores the need for all of us to be vigilant and take proactive measures in protecting our own IP rights in business. While copyright is a valuable tool, the absence of it does not leave IP owners defenseless. Well-drafted contracts can provide a robust legal framework, offering IP owners control over the use and dissemination of their AI-generated works. Whilst AI is destined to further transform industry, Kris’ story pushes new frontiers of how all of us can embrace A.I tools to own the output from which A.I creates. Let's continue the conversation on the importance of contracts as a powerful tool for IP owners to secure the creative output which A.I creates. Through proactive measures IP owners can seize the valuable advantage of using A.I whilst ensuring they own what we can create with these powerful tools.
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