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Ten Things You Should Know (Protecting Your IP Rights Abroad)

Many countries are members of various international treaties that effectively allow you to file just one application for multiple countries, or extend your Australian registration to foreign countries. Although these international agreements have facilitated easier and more streamlined application and registration procedures, here are a few extra things you should know:

  1. Unless your business has a residential or business address in the foreign country, you may need to file applications for intellectual property protection through an overseas agent.
  2. When filing in non-English speaking countries, it is likely that you will need to provide non-English translations of your documents. It is important to factor the cost of translation into your application fees.
  3. If you have a trade mark registration, you must use the trade mark in commerce, in the country of registration. The trade mark may be subject to removal from the country’s register for non-use if the trade mark is not being used.
  4. Certain countries, including China and Japan, rely on a “first-to-file” rule when assessing priority for competing trade marks. This means that the person who filed a trade mark application first will have priority, even if the opposing party can show prior use of the trade mark.
  5. However, other countries, such as Australia and the United States, follow a “first-to-use” rule for obtaining trade marks, meaning that the first person to use a trade mark in the relevant country will have priority over a person who files a trade mark application at a later date.
  6. When conducting trade mark searches in non-English speaking countries, be sure to include in your search, both English and non-English versions of the mark. This would include, for example, Chinese characters which may trade equivalent in sound to the English version of the trade mark.
  7. If you are seeking registration of your trade mark in a non-English speaking country, you may wish to file applications for both English language and foreign language versions of the trade mark to ensure broader protection.
  8. Whenever you are conducting your business overseas, be sure to specify ownership of your intellectual property, for example, in distribution and franchise agreements, or joint venture agreements.
  9. Keep well-informed of potential intellectual property violations in each country and act quickly to enforce your rights.
  10. Unlike Australia, it is possible to register your copyright in certain countries. Although it is not a necessary step, it will strengthen your ability to enforce your rights, should any disputes arise. In the United States, registration of your copyright is compulsory if you wish to file an action for copyright infringement.
  11. Be patient. Application procedures, fees, turnaround time and ease of enforcement all vary depending on local laws and resources. It is important to seek comprehensive legal advice to help you navigate through the different intellectual property protection systems.

For more information about your intellectual property rights and international systems for protecting these rights, see: Australian Exporters: Protect Your Intellectual Property Rights Abroad