APPLICATION GUIDE
A guide to applying
for your international Trade Mark
Robust intellectual property rights delivered efficiently
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Privacy Notice
As explained in our Privacy Policy, IP Australia is authorised to collect information provided in trade mark applications and other requests for service under the Trade Marks Act 1995 (the Trade Marks Act). The information provided to us (the information), including personal information about any person, will be used for the purposes of the Trade Marks Act including, as appropriate:
• to process your, or another person’s, trade mark application;
• to process a request or notice in relation to a trade mark or trade mark application;
• to enable third parties and IP Australia to contact you about your trade mark or trade mark application or a request or notice that you have filed in relation to a trade mark or trade mark application; or
• to perform other functions under the Trade Marks Act.
The Trade Marks Act requires or authorises the Registrar of Trade Marks to disclose and publish the information provided to us in specified circumstances, as explained in IP Australia’s Privacy Policy. This includes disclosure to foreign intellectual property (IP) offices in a number of countries and to IP rights’ information subscribers. The information may be published in Official Journals, Registers and data bases in Australia and elsewhere which may be accessed over the internet and/or as paper copy. Periodically, IP Australia (or a company under contract to us) will use your personal information to contact you to conduct market research about our products and services.
IP Australia is committed to complying with the Privacy Act 1988, which contains information on privacy principles that IP Australia must observe when collecting, using and disclosing personal information. The personal information handling practices of IP Australia are detailed in IP Australia’s Privacy Policy, which contains information about accessing and amending records held by IP Australia containing personal information.
To make a complaint about IP Australia’s collection or handling of your personal information, contact IP Australia’s Privacy Contact Officer:
Telephone 1300 65 10 10 Email assist@ipaustralia.gov.au Post Privacy Contact Officer
IP Australia PO Box 200 Woden ACT 2606
To read IP Australia’s Privacy Policy visit our website: www.ipaustralia.gov.au
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Contents
International trade mark registration and the Madrid Protocol
Applying for an international trade mark registration
Fees and payment options
Warning 10
Protection process
International application flow chart
Glossary 14
Contacting IP Australia
Instructions for filling in the international application form
This application guide is designed to help you prepare and file an international trade mark application under the Madrid Protocol. This guide does not cover every issue that may come up and you should not regard this guide as an authoritative statement on the relevant law and procedure. You should also note that the requirements may change from time to time and while we make every effort to ensure the information presented is accurate, you should check with IP Australia before relying on the information.
IP AUSTRALIA InTERnATIOnAl TRADE MARKS APPlICATIOn GUIDE 1
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International trade mark registration and the Madrid Protocol
INTRodUCTIoN The Madrid Protocol is a treaty providing for the international registration of trade marks. It is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva. Current members of the Madrid Protocol include the United Kingdom, the United States of America, the European Community, France, Germany, Italy, Democratic People’s Republic of Korea, Singapore, China, Japan and norway. Member countries are listed on the international application form.
There are two different ways Australian trade mark owners can seek trade mark protection overseas. An application may be filed directly with each country, or a single international application can be filed through IP Australia nominating the relevant Madrid Protocol countries in which protection is required.
The Madrid Protocol also allows trade mark owners overseas to designate Australia in their international applications.
The beNefITS of INTeRNATIoNAL RegISTRATIoN A single international application can be made in English when an Australian trade mark owner is seeking trade mark protection in other countries that are also members of the Madrid Protocol. This can be simpler and less expensive than applying directly to each country. Furthermore, only a single request is required to make changes to or renew international registrations.
When an international registration is granted protection in a designated country, the trade mark will have the same protection that would be extended to a national registration in that country.
Another benefit of international registration is the ability to designate other Madrid Protocol countries at a later date. These are called subsequent designations.
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WhAT To CoNSIdeR befoRe APPLyINg foR AN INTeRNATIoNAL RegISTRATIoN The national trade mark systems of Madrid Protocol members continue to operate independently, and a trade mark owner can still apply for registration directly to overseas countries. There may be some circumstances where applying directly to a country of interest may be a better option than seeking international registration under the Madrid Protocol.
Some of the points you need to consider are whether:
• the countries you are interested in are members of the Madrid Protocol;
• you are eligible to file an international application under the Madrid Protocol; and
• the scope of your Australian trade mark includes all the goods and/or services you wish to protect overseas.
Intellectual property professionals or business advisers can assist when you are deciding whether to use the existing system or the Madrid Protocol system.
SeARChINg Before applying for an international registration you should try to identify any national trade marks in Madrid Protocol countries of interest that are similar to your trade mark, as this may cause a conflict. To do this you should search the trade mark records in the relevant countries as well as the IB records.
Various trade mark offices provide searchable records of existing trade mark applications and/or registrations on their websites. There are also companies which provide searching services for a fee and some are Internet based.
IB records can be searched using the Romarin database which is available, free of charge, through the WIPO website http://ipdl.wipo.int. Romarin contains information about international applications that have been received by the IB from an Office of Origin and all international registrations.
hoW LoNg doeS AN INTeRNATIoNAL RegISTRATIoN LAST? An international registration under the Madrid Protocol is protected for a period of ten years from its date of registration. The date of registration is usually the date the international application was received by the Office of Origin. International registrations can be renewed every ten years upon payment of the relevant fee.
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Applying for an international trade mark registration
Who CAN APPLy? An applicant, whether a person or a legal entity, must satisfy at least one of the following criteria:
• the applicant must be an Australian national;
• the applicant must be domiciled in Australia; or
• the applicant must own a real and effective industrial or commercial establishment in Australia.
When the application for an international registration is filed by more than one applicant, each applicant must satisfy at least one of the above requirements.
The applicant must also have an application for registration of a trade mark or a registered trade mark with IP Australia.
The bASIC TRAde MARk An application for international registration must be based on one or more Australian trade mark applications or registrations owned by the same applicant(s).
The national trade mark(s) is referred to as the basic trade mark(s). The international application must be for a mark identical to the basic trade mark and include some or all of the goods and/or services covered by that basic trade mark. There may be more than one basic trade mark where the goods and/or services claimed in the international application are spread over several Australian trade mark applications and/or registrations.
dependence on basic trade mark: The basic trade mark must be carefully maintained because the international registration is dependent on it for five years from the date the international application is filed. IP Australia must report changes to the scope of the basic trade mark to the IB because this will have the same effect on the international registration.
For example, if the basic trade mark lapses, is cancelled or removed, or the goods and/ or services are restricted within five years of the international application being filed, the IB will cancel the international registration to the same extent in all designated countries. This also applies if the basic trade mark is restricted or ceases as a result of an action that commenced within the five year period.
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Priority: If you have previously filed the same trade mark in another country, the Paris Convention allows you to claim an earlier priority date on your international application providing it is filed within six months of the date on which the trade mark was first filed. This may be your national application.
Note: If you have not yet filed your (basic) Australian application, you should consider doing so and then later filing your international application.
If you wait to receive an examination report on your national application before filing your international application, you will have an indication of the likelihood of acceptance of your basic Australian trade mark. Please call IP Australia’s Customer Service Centre on 1300 651 010 to find out the current time between filing and examination of national applications.
SeRIeS of TRAde MARkS It is nOT possible to file an international application for a series of trade marks, even where the basic trade mark covers a series of marks. The international applicant is advised to select one trade mark in the series as the trade mark on their international application.
SPeCIAL TRAde MARkS • three-dimensional
• colour
• sound
International applications for three-dimensional trade marks, colour trade marks and sound trade marks must include the same written description as the basic trade mark.
• certification, collective and guarantee trade marks
It is possible to file an international application for a collective, certification or guarantee trade mark. You should be aware that in some countries collective and certification trade marks are not the same as collective or certification trade marks under Australian trade mark legislation. Some countries will require documentation such as rules, and will advise holders of their requirements. Australia does not have guarantee trade marks.
CARe IS Needed Please be very careful when completing the international application form. Once filed the goods and/or services cannot be extended. no changes at all can be made to the trade mark.
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fILINg yoUR INTeRNATIoNAL APPLICATIoN International applications which are based on Australian trade mark applications or registrations must be filed through IP Australia.
An international application cannot be filed direct with the IB.
The application form (MM2) can be downloaded from the WIPO website at www.wipo.int/madrid/en/index.html
We accept completed international applications
• by mail to The Registrar of Trade Marks, IP Australia, PO Box 200, WODEn ACT 2606
• by fax (credit card payments only) to our secure fax at (02) 6283 7999
If mailing or faxing your credit card details please use our Payment form for credit cards, cheques and money orders.
LookINg AfTeR yoUR INTeRNATIoNAL RegISTRATIoN You can file your own application for international registration or you can use the services of a registered patent or trade mark attorney or a solicitor experienced in trade mark matters.
Some designated countries may insist on the nomination of an address for service in their country if they issue a provisional refusal (an objection) against an international registration. The offices of designated countries will advise you of their requirements where this occurs in relation to your international registration.
ReqUeSTINg ChANgeS To AN INTeRNATIoNAL RegISTRATIoN It is not possible to request changes to an International Application until the International Application has been recorded on the International Register and given an International Registration number. You may then apply in writing directly to the IB, or through IP Australia to record:
• an amendment to the holder’s name or address;
• a restriction to the goods and/or services;
• a change in ownership of the international registration; or
• subsequent designations.
If a change is needed in respect of details of an International Application please contact IP Australia. This change may not be able to be requested until after an International Registration number has been allocated.
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Subsequent designations: It is possible to add countries to an international registration at any time. This may be desirable when your markets expand or when other countries join the Madrid Protocol. Requests for subsequent designations may be made through IP Australia or direct to the IB. A separate form and fees are needed for these requests. Please read the information on IP Australia’s website.
ReNeWAL Under the Madrid Protocol, renewal of international registrations is due ten years from the registration date as recorded by the IB. The IB notifies the holder or their representative six months before the expiry date. Payment of renewal fees may be made up to six months after the expiry date, however penalty fees apply.
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fees and payment options
hoW MUCh doeS IT CoST? All fees may be paid either to IP Australia in Australian dollars at the time of filing the international application or directly to the IB.
IP Australia has a fee calculator to enable applicants to work out how much an international application will cost in Australian dollars. It is available at www.ipaustralia.gov.au
If paying directly to the IB, the fee calculator on the WIPO website www.wipo.int/madrid/en/index.html should be used to calculate the amount due in Swiss francs.
A handling fee of AU$100 applies to each international application filed through IP Australia. The handling fee is to cover costs involved in checking, certifying and transmitting the international application to the IB. The handling fee must be paid to IP Australia when filing an international application, even where other payments are being made directly to the IB.
The international application fee consists of:
• basic fee 653 Swiss francs or 903 Swiss francs where there is any colour in the representation of the trade mark.
and
• supplementary fee 100 Swiss francs for each extra class over 3 classes. Note: If all designated countries require individual fees, the supplementary fee does not apply.
and
• complementary fee(s) 100 Swiss francs for each designated country, unless the country requires an individual fee; and/or,
• individual fee(s) Currently a large number of countries have individual fees. A country’s individual fee can be no higher than the equivalent national filing and registration fees. The list of individual fees is available on the WIPO website www.wipo.int/madrid/en/fees/
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hoW To PAy International application fees may be paid either through IP Australia in Australian dollars at the time of filing the international application or directly to the IB in Swiss francs. Please complete the IB’s Fee Calculation sheet included on the application form if you are paying to the IB.
Payment can be made to IP Australia
• By post (cheque, money-order, payment form for credit card);
• By fax (using the payment form for credit card) to our secure business transaction fax (02) 6283 7999;
• By Electronic Funds Transfer (EFT) — remittance advice required. To arrange please contact 1300 651 010.
Cheques should be made payable to IP Australia. We accept MasterCard and Visa.
We will also accept payment in Australian dollars for other IB fees including renewal fees, subsequent designations, changes to the name and address of a holder, and the transfer of ownership.
Payment can be made to the Ib by
• Debit to a current account with WIPO;
• Payment or transfer to the Swiss postal cheque account of WIPO, no. 12-5000-8, in Geneva;
• Transfer to WIPO’s bank account with the Swiss Credit Bank, Geneva;
• A banker’s cheque;
• Payment in cash at the IB;
• By credit card using WIPO electronic payment services.
The purpose of the payment to the IB must be indicated, together with:
• the name of the applicant; and
• the number of the basic application or registration concerned, if available.
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Warning International trade mark holders may be sent unsolicited documents from companies which offer, for a fee, to register trade mark information for the implied purpose of protecting trade mark rights.
Some of these companies identify themselves as:
• globus edition SL, Palma de Mallorca, Spain
• Company for economic Publications Ltd, Vienna, Austria
• IT & TAg, Switzerland
• Company for Publications and Information Anstalt, Liechtenstein
• INfoCoM, Schaan, Switzerland
• International bureau for federated Trademark & Patent Register
• gaia Alamanach LTd
• Commercial Centre for Industry and Trade, Switzerland
• european Institute for economy and Commerce eIeC, belgium
• Institute of Commerce, Trade and Commerce, Switzerland
• TM Collection, hungary
• ZdR-daten register gmbh, germany
• Register of International Patents and Trademarks (RIPT)
• edition The Marks kfT
These companies are sending documents resembling invoices to trade mark owners which offer ‘entry’ of trade mark details in an annual publication. They are usually sent after the trade mark details have been advertised in IP Australia’s Official Journal of Trade Marks.
These companies are not associated with IP Australia and have no official or governmental authority in Australia. The service they offer does not provide official trade mark registration or trade mark rights in Australia or any other country.
Please note, the above list is not exhaustive. More information can be found by viewing the ‘Warning! Unsolicited IP Services’ fact sheet available on our website at www.ipaustralia.gov.au
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Protection process
IP AUSTRALIA AS offICe of oRIgIN IP Australia checks the international application and the fees payable. When IP Australia can certify that the international application meets requirements, the application is forwarded to IB and the applicable fees are forwarded to the IB. It is very important that you quickly respond to any issues raised by IP Australia during the certifying process. The filing date of the international registration is the date of receipt of the international application by IP Australia, providing the international application and IP Australia’s certification are received by the IB within two months of that date. However, if IP Australia cannot certify and forward the international application to the IB within two months from the date we receive the international application, the original filing date will be lost.
IP Australia will also monitor the basic trade mark for at least five years from the date the international application is filed and must notify the IB if it ceases to exist or there is a restriction in its scope.
INTeRNATIoNAL bUReAU (Ib) The IB checks that the international application meets their requirements such as classification, formalities and fees. The international applicant and IP Australia will be notified if the IB has any problems with the international application*. When any problems have been overcome the trade mark is recorded in the International Register. The IB sends the applicant a Certificate of Registration and notifies all designated countries. The Certificate of Registration does not mean that the trade mark is protected in any of the designated countries. Details of the international registration are published in the WIPO Gazette. International registration can be seen as equivalent to filing an application in each of the designated countries.
Further information can be obtained from the WIPO website www.wipo.int/madrid/en/index.html
* Contact IP Australia immediately if you receive an irregularity notice from the Ib about your international application.
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deSIgNATed CoUNTRIeS The international registration is examined according to the trade marks legislation and laws existing in each designated country. It is important to note that if the international registration is refused in one country, it does not necessarily mean it will be refused in all designated countries. It is possible for an international registration to attract no objections in some countries but have a notification of refusal issued by others.
A notification of refusal is sent by the designated country to the IB who forwards a copy to the trade mark holder. Refusals must be made within a set time limit, 12 or 18 months. In some cases, but only after the holder has been made aware of the possibility, opposition can be lodged after the expiry of these time limits. Countries notifying a refusal are required to provide the IB and the holder with detailed reasons and supporting documentation. Most countries allow for a review of, or appeal against, a refusal. A provisional refusal based on examination is similar to a first adverse report in Australia. It will include any ways in which the problems may be able to be overcome.
If no refusal is issued, or it is overcome, the international registration will be protected in the designated country. Protection will be effective from the date recorded on the international registration. In most cases this will be the date on which IP Australia received the application for the international registration. Protection in a designated country will give the holder the same rights as if the trade mark had been registered in that country.
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International application flow chart Note: IP Australia is the Office of Origin for Australians seeking protection overseas by filing international applications.
Australia will be a designated country for overseas trade mark owners seeking protection in Australia under the Madrid Protocol.
offICe of oRIgIN
Note: If the Australian basic trade mark is restricted within five years of international registration date, IP Australia must notify the IB. The IB cancels the international registration to the same extent and notifies designated countries.
Holder has three months to file a transformation application in the designated countries and keep the priority date of the international registration.
deSIgNATed CoUNTRyINTeRNATIoNAL bUReAU
national application filed — an international
application may be based on this application or on the
resulting registration
International application filed with IP Australia
IP Australia checks international application
against basic trade mark
IB sends certificate to holder
IB registers international application and publishes
international registration in its Gazette
IB checks international application for fees,
formalities and classification
IB advises designated countries
IP Australia certifies international application and sends it to the IB
Examines the international registration in accordance with its national legislation
When everything is in order, designated country
gives effect to the international registration as if it were a trade mark registered as a result of a national application
notifies IB of problems (refusal)
IB sends the notice to the holder
Once any problems are overcome, the
designated country may advertise the international registration for opposition
If opposition is filed designated country must notify the IB
The IB • handles changes
to the international registration
• renews international registrations
• communicates with the holder, Office of Origin and designated countries
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glossary basic Trade Mark The national application or registration on which the international
application or registration is based.
Contracting Party Any country, State or inter-governmental organisation which is a member of the Madrid Protocol.
designated Countries Those countries that you nominate on the international application form as countries in which you are seeking international trade mark protection.
holder The owner of an international registration.
Ib The International Bureau of the World Intellectual Property Organization (WIPO).
International Application
Your international trade mark application before the IB has issued a Certificate of Registration.
International Register The IB’s database that contains all international registrations, including details of each designated country.
International Registration
Your international application after the IB has issued the Certificate of Registration and notified the designated countries.
office of origin The Trade Marks Office of the country through which the international application is filed. For Australian applicants this is IP Australia.
Protected International An international trade mark registration to which protection has Trade Mark been given in Australia.
Subsequent Any country that is added to your international registration after the designation international application is forwarded to the IB.
WIPo The World Intellectual Property Organization in Geneva.
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Contacting IP Australia IP Australia staff are happy to help you and to answer your queries. However we cannot assist clients on legal matters or provide business advice. You may wish to consult a patent or trade mark attorney, a solicitor experienced in intellectual property matters, or your business adviser.
IP Australia subscribes to the Telephone Interpreter Service. If you need help communicating in English, you can phone the interpreter service on 131 450 for the cost of a local call from anywhere in Australia.
All written correspondence regarding trade marks should be directed to The Registrar of Trade Marks.
Postal address: Po box 200, WodeN ACT 2606
Phone: 1300 651 010 general enquiries — contact our Customer Service Centre for general information relating to patents, trade marks, designs or plant breeder’s rights and for assistance with subscriptions, sale of publications and electronic communication.
Fax: (02) 6283 7999 business Transactions fax — for lodgements, filings and business related correspondence such as financial and confidential material. Faxes received at this secure number are receipted at Australian Eastern Standard/Daylight Saving time.
Email: assist@ipaustralia.gov.au — for general enquiries. However, filing of documents and payments are not available through this address.
Website: www.ipaustralia.gov.au — for information relating to intellectual property, to submit online applications, and to download forms and other documents.
CUSToMeR SeRVICe ChARTeR IP Australia is committed to being a customer focused organisation. To help our customers, IP Australia has a Customer Service Charter outlining the standards of service you can expect from us. To obtain a copy of the charter, simply ring 1300 651 010 or visit our website.
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CoMMUNICATINg eLeCTRoNICALLy WITh IP AUSTRALIA The date which you provide information to IP Australia can be critical to the certainty of your intellectual property rights.
IP Australia has implemented a set of business rules which establish that when you communicate with us electronically (eg email, fax or online) using our preferred contact numbers and methods, the date and time of communication will be Australian Eastern Standard/Daylight Saving time.
Our preferred means of communication are:
• the IP Australia website — www.ipaustralia.gov.au;
• our business transactions fax number — (02) 6283 7999; or
• email — assist@ipaustralia.gov.au
Communication sent to other contact points electronically will be processed in accordance with the date and time at the place of receipt. These communications will not gain the benefits provided by the Electronic Transactions Act such as security and certainty of receipt.
The Electronic Transactions Act business rules address a range of issues including:
• identifying the appropriate form of electronic communication to use for different types of correspondence;
• choosing electronic payment options;
• receiving notifications; and
• utilising supported electronic formats.
Further details on IP Australia’s electronic communication business rules can be found at www.ipaustralia.gov.au
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Instructions for filling in the international application form To ensure that you are using the most up-to-date Application for International Registration forms, please download the current forms from the WIPO website (www.wipo.int/madrid/en/ index.html).
If your application is not received by the IB within two months of filing with IP Australia, the original date of filing cannot be granted. This may occur where your international application is not completed correctly or the handling fee has not been paid.
1. Contracting party whose office is the office of origin
This is the Protocol country through which the trade mark holder is applying. In this case, Australia.
2. Applicant
As well as the name, address, address for correspondence, and telephone/fax numbers, the applicant is also required to state either English, Spanish or French as the preferred language for correspondence coming from the IB. All correspondence between the applicant and IP Australia however must be in English. Also, all correspondence between IP Australia and the IB will be in English.
3. entitlement to file
Each applicant is required to state their connection with Australia. That is, each applicant must be either an Australian national, be domiciled in Australia, or have a real and effective industrial or commercial establishment in Australia. If the applicant is domiciled in Australia or has real and effective industrial or commercial establishment in Australia, that address must also be provided.
4. Representative
This is an optional section to be completed only if the applicant has a representative who will communicate with the IB on their behalf. If the representative has previously been allocated an identification code by WIPO, that code should be given in the space provided; otherwise, that space should be left blank.
5. basic application or basic registration
An international application must be based on a trade mark (or trade marks) applied for
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or registered with IP Australia. The owner of the trade mark must be the same as, the mark identical to, and the goods and/or services the same or less than the national trade mark. The number and filing date of the basic trade mark(s) must be included. If you have only recently filed your Australian application and do not yet know the number allocated to it by IP Australia, the basic trade mark and date of filing must be described in the covering letter so that IP Australia can complete this section.
6. Priority claimed
The applicant may claim a filing date earlier than the actual filing date of the international application if their first filing of the trade mark in a country party to the Paris Convention occurred within six months prior to filing the international application. A convention claim can be based on the basic Australian trade mark where this international application is filed within six months of filing the Australian application.
7. The mark
A representation of the trade mark is to be attached to the space provided at box (a). The representation must be identical to the trade mark that is the subject of the basic application or registration.
If the representation on the basic trade mark is in black and white, the representation in box (a) must be black and white. If the representation on the basic trade mark is in colour, the reproduction in box (a) must also be in colour. If the representation on the basic trade mark is in black and white but claims colour as a distinctive feature of the mark (see point 8 below), a reproduction of the mark in colour must also be provided in box (b). The trade mark can be typed, printed, pasted or reproduced on the form.
The representation will be scanned for reproduction in WIPO’s Official Gazette therefore it must be sufficiently clear for this purpose.
The representations must fit in the square area provided on the form and must be no larger than 8cm x 8cm.
If the trade mark is a word mark (that is a word/s rendered in common type script with no embellishments or device elements) box (c) may be ticked. This declaration does not legally bind either the Office or courts of a designated country who may themselves have criteria as to what constitutes standard characters.
8. Colour(s) claimed
This section is to be completed when the applicant claims colour as a distinctive feature of the mark in both the basic trade mark and the international application (see point 7 above).
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9. Miscellaneous indications
Transliterations must be provided for characters other than latin characters or numerals other than Arabic or Roman numerals. The IB does not require the applicant to provide a translation for trade marks consisting of or containing words in languages other than English. Some member countries however may require a translation before protection can be granted. This section is also for the indication of trade marks which are three-dimensional, sound marks, or collective, certification or guarantee marks. There are no guarantee marks in Australia. In some countries a certification trade mark is referred to as a guarantee trade mark, or as a collective trade mark.
Any endorsements included in the basic trade mark which describe the mark itself must be recorded on the international application form. Endorsements concerning the use of the trade mark are not to be included.
10. goods and services for which international registration is sought
The goods and/or services claimed must be the same as or less than those claimed in the basic trade mark(s). The exact wording need not be used however the claim may be equivalent to but not broader than the basic trade mark. The applicant must list the goods and/or services grouped in the appropriate class determined by the International Classification of Goods and Services. Each group must be preceded by the class number and where more than one class exists, listed in numerical order.
If the G&S claimed are exactly the same as the basic trade mark the following wording may be used.
EG. Class Goods and Services 16 Exactly as stated in basic
application or registration
11. designated contracting parties
The applicant is to tick the boxes corresponding to the countries which the international registration is to cover. The space under Others is for the designation of countries which have acceded to the Madrid Protocol after the form was printed.
If the European Community (EM) is designated, the applicant must indicate a second language in which third parties may lodge opposition and cancellation proceedings before the Office of the European Community (OHIM). The applicant must choose between French, German, Italian or Spanish, and indicate their choice by ticking the appropriate box. In addition, if the applicant already has an identical mark for the same goods and/or services registered in a member state of the European Community they may be able to claim seniority of that earlier mark. Such a claim means that in the event that the earlier mark is allowed to lapse or is surrendered, the applicant will continue to have the same rights as they would have had if the earlier mark had continued to be registered. A claim to seniority must be made on the IB’s official form MM17 and attached to the application form.
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If the US is designated the applicant must also complete official form MM18 — the Declaration of Intention to Use the Mark. Both forms MM17 and MM18 can be found on the WIPO website www.wipo.int/madrid/en
12. Signature by the applicant or his/her representative
IP Australia does not require the application form to be signed.
13. Certification and signature of the international application by the office of origin.
This is to be completed by IP Australia.
IP Australia must certify that the information contained in the international application form accords with the details of the basic trade mark.
Payment to the Ib
Fee Calculation Sheet
Part a) is only to be completed if the applicant has an existing account with the IB.
Payment to IP Australia
Payment form for credit cards, cheques and money orders
Please complete Payment form for credit cards, cheques and money orders
ipaustralia.gov.au
January 2
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