The International Trademark system administered by the World Intellectual Property Organisation (WIPO) provides an easy process of filing trademark applications in Madrid Protocol countries.

Not only is it simple and easy to use but it provides cost incentives. Once more than two countries are designated the cost-saving is substantial as compared to filing directly into the countries of choice. The application is cheaper but the process of obtaining trademark registration can also give cost savings as it may not be necessary to use a local agent and the administration in respect of one registration is less than the administration on many trademark registrations.

It is also very easy to designate countries whereby it is as simple as ticking a box to designate that country.

However, due to the difference in laws around the world, international applications designating Australia may be invalid.

Australia has some idiosyncrasies when it comes to Intellectual Property Law and Australia just isn’t like many other countries when it comes to trademark law. Australia is a first-to-use country, not a first-to-file country.

Section 27 of the Australian Trade Marks Act requires that only persons who claim to be the owner of the trademark can apply to register an Australian trademark.

Provisions for dealing with an International Registration Designating Australia (IRDA) are covered in Division 3 of Part 17A of the Trade Mark Regulations. Those regulations allow registration of the trademark to be opposed on grounds that include section 58 – the Applicant is not the owner of the trademark.That is also a ground for cancellation of a trademark.

Accordingly where an IRDA has originated from a home country that is a first-to-register country, and the recorded owner of the trademark is not the owner of the trademark in Australia. The trademark is likely to be invalid and unenforceable.

When it comes to Patent infringement cases, it is exceedingly common for the Respondent to file a cross-claim for invalidity of the Patent. However, that it has not been common for a Respondent to a trademark infringement proceeding to counter-claim for invalidity of the trademark or to argue that point before a case is filed – until now. We are seeing more and more cases of the trademark being threatened prior to cases being filed and trademark cross-clams for invalidity being raised as a defence to a trademark infringement claim.

The trademark lessons to be learnt here are to take qualified legal advice from trademark professionals before designating Australia. It could be that instead of filing an International Application Designating Australia a direct filing is necessary.

Another lesson that needs to be recalled is that trademarks are a use it or lose it regime. It is not possible for an overseas company to simply register the trademark in Australia, appoint a distributor and set and forget. Rather the owner of the trademark must control its use. It is not enough for it to have the ability to control use, it must actually control the use of the trademark. If it does not control the use of the trademark it is possible that it may become vulnerable to removal for non-use and the distributor may claim to be the owner of the trademark.