How Do I Protect My Trademark When Expanding My Brand into the US, EU, and Asia?

By Hollie Ford · 2026-03-06

To protect your trademark during international expansion, you need to file registrations in each target market — either directly with national/regional IP offices (such as the USPTO, EUIPO, or CNIPA) or via the Madrid Protocol, which allows you to extend your Australian trademark into 130+ member countries through a single international application. The critical first step is understanding that trademark rights are territorial: your Australian registration provides zero protection in the United States, the European Union, China, or any other jurisdiction. A phased international filing strategy — prioritising first-to-file jurisdictions like China where trademark squatting is prevalent — is essential for any brand scaling beyond Australian borders.

Disclaimer: This information is general in nature and does not constitute legal advice. Trademark law varies significantly between jurisdictions, and you should seek tailored professional guidance before making filing decisions. We recommend consulting a registered trademark attorney who understands your specific expansion plans.

TL;DR

• Trademark rights are territorial — your Australian registration does not protect your brand in any other country; you must file separately in every market you plan to enter.
• The Madrid Protocol lets you file one international application (via IP Australia) designating multiple countries, but it is not always the best route — direct national filings may offer strategic advantages in key markets.
• China is a first-to-file jurisdiction — if someone else registers your brand name before you do, they own it, regardless of your prior use in Australia or elsewhere. File early, even before market entry.
• The US operates a first-to-use system with unique requirements including proof of "use in commerce" and specimens showing the mark on goods/services — Australian brands must plan for this.
• An EUTM (EU Trademark) gives you protection across all 27 EU member states with a single registration through the EUIPO, making it one of the most cost-effective regional filings available.
• International filing costs vary significantly — budget approximately AUD $1,500–$4,000+ per jurisdiction depending on the number of classes, filing method, and whether local counsel is required.
• A phased filing strategy aligned with your expansion roadmap protects your brand in high-risk markets first while managing costs across growth stages.

---

Ready to protect your brand internationally? Get in touch with our team to discuss your expansion plans and build a filing strategy that fits your roadmap.

---

Section 1: Registration Questions

If you are an Australian brand manager preparing for international expansion, you likely have a raft of questions about how overseas trademark registration actually works. This section addresses the most common registration questions we hear from scaling brands — from the mechanics of the Madrid Protocol to the differences between first-to-file and first-to-use systems.

Why doesn't my Australian trademark protect me overseas?

Trademark rights are territorial. This is one of the most important — and most frequently misunderstood — concepts in international intellectual property law. Your registration with IP Australia grants you exclusive rights to use your mark in Australia only. The moment you begin selling, advertising, or distributing products or services in another country, your Australian registration offers zero legal protection in that jurisdiction.

Each country (and in some cases, each region) maintains its own trademark register, its own examination process, and its own enforcement mechanisms. If you launch your brand in the United States without a USPTO registration, you have no federal trademark rights there. If you start selling into the EU without an EUTM, you cannot rely on your Australian registration to stop an infringer in Germany or France.

This territorial principle is enshrined in international agreements including the Paris Convention for the Protection of Industrial Property (1883) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). While these treaties create frameworks for cooperation between countries, they do not create automatic cross-border rights. You must actively file for protection in each market.

What is the Madrid Protocol and how does it work for Australian brands?

The Madrid Protocol (formally, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) is an international treaty administered by the World Intellectual Property Organization (WIPO). It allows you to file a single international application — through IP Australia as your "office of origin" — and designate multiple member countries where you want trademark protection.

Here is how the process works in practice:

1. Base application or registration: You must have an existing Australian trademark application or registration to serve as the foundation for your international application under the Madrid Protocol.
2. File through IP Australia: We prepare and lodge your international application with IP Australia, which certifies and forwards it to WIPO.
3. WIPO processes and publishes: WIPO conducts a formalities examination, records the international registration, and publishes it in the WIPO Gazette of International Marks.
4. Designation to member countries: WIPO notifies the IP office in each country you have designated. Each national or regional office then examines your application according to its own laws.
5. National examination: Each designated office has 12–18 months to issue a refusal. If no refusal is issued, your mark is protected in that jurisdiction.

As of 2025, the Madrid system has over 130 member countries, covering the vast majority of commercially significant markets including the US, EU, China, Japan, South Korea, Singapore, India, and the United Kingdom.

Advantages of the Madrid Protocol:

• Single application, single set of fees (in Swiss francs) to WIPO
• Centralised management of your international portfolio
• Ability to add new countries later through "subsequent designations"
• Cost-effective for brands targeting multiple jurisdictions simultaneously

Limitations to be aware of:

• "Central attack" risk: If your base Australian application or registration is cancelled, refused, or restricted within five years, all dependent international designations can also be cancelled
• Each designated country still examines under local law, so refusals can and do happen
• In some jurisdictions, a direct national filing may provide broader or more flexible protection
• Not all countries are members (notably, some markets in the Middle East and parts of Africa remain outside the system)

When should I file directly with a national or regional office instead of using the Madrid Protocol?

This is a strategic question we address with every client planning international expansion. The Madrid Protocol is not always the optimal route. Direct national filings may be preferable in several situations:

• China (CNIPA): While China is a Madrid member, direct filings with the China National Intellectual Property Administration can sometimes be processed more efficiently, allow for more nuanced goods and services descriptions aligned with the Chinese sub-class system, and avoid the central attack vulnerability.
• United States (USPTO): US trademark law has unique requirements around "use in commerce" and specimens. Filing directly with the USPTO — particularly through a US-based attorney, which is mandatory for foreign applicants — allows you to manage these requirements more proactively.
• European Union (EUIPO): An EUTM filed directly with the European Union Intellectual Property Office covers all 27 member states in a single registration. While you can designate the EU via Madrid, direct filing offers certain procedural advantages and avoids central attack risk.

Our Registered Trade Mark Attorney, Hollie Ford, advises: "We always assess the Madrid Protocol alongside direct filing options for each client. There is no one-size-fits-all answer. For a brand expanding into three or four carefully chosen markets, direct national filings often give you more control and resilience. For a brand going broad across ten or more jurisdictions, Madrid can deliver significant cost and administrative savings."

What is the difference between first-to-file and first-to-use trademark systems?

This distinction is critical for Australian brand managers because it determines who owns a trademark in a given country — and it varies dramatically between your key target markets.

First-to-file jurisdictions (including China, the EU, Japan, South Korea, and most of Asia-Pacific) grant trademark rights to the first party to file an application, regardless of who used the mark first. If a third party registers your brand name in China before you do, they own it — even if you have been using that brand in Australia for twenty years.

First-to-use jurisdictions (most notably the United States) grant trademark rights based on who first used the mark in commerce. However, this does not mean you can skip registration. Federal registration with the USPTO provides significant legal advantages including nationwide constructive notice, the ability to record your mark with US Customs, and access to federal courts.

Why this matters for your expansion strategy:

In first-to-file countries — especially China — you must file proactively, ideally before you enter the market, before you engage local distributors, and before your brand gains any visibility that could attract squatters. In the US, you need to plan for actual use of the mark in commerce, which means having goods or services available in the US market before your registration can fully mature.

What is trademark squatting, and how do I prevent it?

Trademark squatting occurs when a third party registers your brand name (or a confusingly similar mark) in a foreign jurisdiction, typically with the intention of either blocking your market entry or extracting a financial settlement from you.

This is particularly prevalent in first-to-file jurisdictions, and China is the most commonly cited example. Chinese trademark law operates strictly on a first-to-file basis, and the CNIPA does not generally investigate whether an applicant has a legitimate connection to a mark. The result is that Australian brands — particularly those gaining traction online, at trade shows, or through social media — frequently discover that their brand name has already been registered by an unrelated Chinese entity.

Practical steps to prevent squatting:

• File early in high-risk markets. If China, South-East Asia, or other first-to-file markets are on your five-year horizon, file now — not when you are ready to enter.
• Monitor trademark registers. We recommend ongoing watching services to detect third-party applications for marks similar to yours in key jurisdictions.
• Secure your mark across relevant classes. Squatters often register in classes adjacent to your core goods or services, so consider filing broadly in high-risk markets.
• Document your use. Even in first-to-file jurisdictions, evidence of prior use and reputation can sometimes support opposition or cancellation proceedings against squatters.

Can I register my trademark in a country where I am not yet selling?

Yes. In most jurisdictions — including China, the EU, Japan, and many APAC countries — you do not need to be actively using your trademark to file for and obtain registration. These are registration-based systems where the act of filing confers rights.

The notable exception is the United States, where you must either demonstrate current use in commerce at the time of filing (under Section 1(a) of the Lanham Act) or file on an "intent to use" basis (under Section 1(b)), which gives you a period to begin use before your registration issues. Even on an intent-to-use basis, you will eventually need to submit a Statement of Use with specimens proving the mark is being used on the claimed goods or services.

This distinction is why we encourage proactive filing in first-to-file jurisdictions even when market entry may be twelve to twenty-four months away.

---

Section 2: Cost Questions

Understanding the costs involved in international trademark protection is essential for building a realistic budget as part of your expansion planning. We find that many brand managers are surprised by how much costs can vary between jurisdictions, filing methods, and the number of Nice classes you need to cover. This section breaks down what you should expect to spend and where the key cost variables lie.

How much does it cost to register a trademark internationally?

There is no single answer because costs vary significantly depending on four key factors:

1. The jurisdiction — official fees differ between countries and regional offices
2. The filing method — Madrid Protocol designations vs direct national filings have different fee structures
3. The number of Nice classes — most offices charge per class, and brands in multiple product/service categories will pay more
4. Whether local counsel is required — many jurisdictions (including the US and China) require foreign applicants to appoint a local agent or attorney

As a general guide, here is what Australian brand managers should budget for key markets:

Note: All costs are approximate, include estimated professional fees, and are subject to change. Official government fees are only one component — professional preparation, searching, and prosecution add to the total.

What does the Madrid Protocol cost compared to direct filing?

The Madrid Protocol can be more cost-effective when you are designating multiple countries simultaneously, because you file a single application and pay a single set of WIPO fees (in Swiss francs) plus individual designation fees for each country.

However, when you are only targeting one or two jurisdictions, direct national filing is often comparable in cost — and may even be cheaper once you factor in the requirement to maintain an underlying Australian base registration and the fees involved in responding to any refusals issued by designated offices (which still require local counsel in most jurisdictions).

Here is a simplified comparison:

The Madrid Protocol's cost advantage generally increases with the number of jurisdictions designated.

Are there hidden costs I should budget for?

Yes — and this is where many expansion budgets come unstuck. Beyond the initial filing fees, you should anticipate:

• Trademark searching fees: Before filing in any jurisdiction, you should conduct clearance searches to assess the risk of conflicting prior marks. Comprehensive searches in each target market can cost AUD $500–$1,500+ per jurisdiction.
• Office action responses: If a national IP office raises objections to your application (and this is common), responding typically requires local counsel and can cost AUD $500–$2,000+ per response, per jurisdiction.
• Opposition proceedings: If a third party opposes your application, defending that opposition can cost AUD $3,000–$15,000+ depending on the jurisdiction and complexity.
• Renewal fees: Trademarks must be renewed (typically every 10 years) in each jurisdiction. Factor this into your long-term budget.
• Translation and legalisation costs: Some jurisdictions require certified translations of application documents or legalised powers of attorney.
• Watching and monitoring services: Ongoing monitoring of trademark registers to detect infringing applications typically costs AUD $300–$800+ per mark, per jurisdiction, per year.

How do I build a realistic budget for international trademark protection?

We recommend building your trademark budget as a phased investment that aligns with your expansion roadmap, rather than trying to file everywhere at once. A practical framework:

Phase 1 — Secure your home base (Months 1–3): Ensure your Australian trademark registration is current, covers all relevant classes, and can serve as the foundation for international filings. Budget: AUD $1,000–$3,000.

Phase 2 — File in high-risk, first-to-file markets (Months 1–6): Prioritise China and any other first-to-file jurisdiction where squatting is a risk, even if market entry is twelve or more months away. Budget: AUD $2,000–$5,000 per jurisdiction.

Phase 3 — File in confirmed expansion markets (Months 3–12): As you firm up your market entry plans for the US, EU, UK, or APAC, file in those jurisdictions. Budget: AUD $2,000–$4,000+ per jurisdiction.

Phase 4 — Expand and maintain (Ongoing): Add new jurisdictions as your business grows, renew existing registrations, and invest in monitoring services. Budget: AUD $3,000–$10,000+ annually depending on portfolio size.

---

Not sure what your international filing should cost? Book a free trademark search and we will provide a tailored budget estimate for your target markets.

---

Section 3: Process Questions

Knowing what the international filing process looks like — in practical terms — helps you plan timelines, allocate internal resources, and avoid costly missteps. This section walks you through what to expect when filing in each key jurisdiction.

How long does it take to register a trademark internationally?

Timelines vary considerably between jurisdictions. As a brand manager, you should plan your filings well ahead of your market launch dates. Here is what to expect:

All timelines are approximate and assume no objections, oppositions, or other complications.

These timelines reinforce why proactive filing is so important. If you wait until you are ready to launch in a market, you may be operating without trademark protection for twelve months or more — during which time your brand is vulnerable.

What does the filing process look like step by step?

While each jurisdiction has its own nuances, the general process for registering a trademark internationally follows a consistent pattern:

Step 1: Strategy and clearance (2–4 weeks) Before filing anywhere, we conduct clearance searches in each target jurisdiction to identify potential conflicts. We assess the risk landscape and advise on filing strategy — including whether to use the Madrid Protocol, direct filing, or a combination.

Step 2: Application preparation and filing (1–2 weeks) We prepare your application, ensuring that your goods and services descriptions are tailored to each jurisdiction's classification system. For example, China uses a sub-class system that is more granular than the standard Nice Classification, and your descriptions need to account for this.

Step 3: Formalities examination (2–8 weeks) Each IP office conducts an initial review to ensure your application meets formal requirements. For Madrid filings, WIPO also conducts its own formalities check before forwarding to designated offices.

Step 4: Substantive examination (3–12 months) An examiner reviews your application against local law, checking for absolute grounds of refusal (e.g., the mark is descriptive or non-distinctive) and, in some jurisdictions, relative grounds (e.g., conflicts with prior marks). The USPTO, CNIPA, and JPO all conduct substantive examination. EUIPO examines on absolute grounds only; relative grounds are left to third-party opposition.

Step 5: Publication and opposition period (1–3 months) Once accepted, your application is published for opposition. Third parties can file an opposition if they believe your mark conflicts with their rights. Opposition periods vary: 30 days in the US (extendable), 3 months in the EU, 3 months in China, and 2 months in Japan.

Step 6: Registration If no opposition is filed (or if an opposition is successfully defended), your mark proceeds to registration. In the US, if you filed on an intent-to-use basis, you must first file a Statement of Use with specimens.

Step 7: Ongoing maintenance After registration, you must renew your mark (typically every 10 years) and, in use-based jurisdictions like the US, file periodic declarations of continued use (Sections 8 and 15 of the Lanham Act).

What are the specific requirements for filing in the United States?

The US has several unique requirements that catch Australian brand managers off guard:

• US-licensed attorney requirement: Since August 2019, all foreign applicants must be represented by a US-licensed attorney before the USPTO. You cannot file a US application yourself or through a non-US representative.
• Use in commerce: The USPTO requires evidence that your mark is being used in commerce in the United States. If you are not yet using the mark, you can file an "intent to use" (Section 1(b)) application, but you will need to demonstrate actual use before the registration will issue.
• Specimens: You must submit specimens showing how the mark is actually used on your goods or in connection with your services. For goods, this typically means labels, packaging, or screenshots of the mark on the product as sold. For services, it means advertising or marketing materials showing the mark in connection with the services.
• Identification of goods and services: The USPTO is very particular about the specificity of goods and services descriptions. The broad descriptions commonly accepted in Australia and other jurisdictions may be refused or require amendment in the US.

What are the specific requirements for filing in China?

China's trademark system presents unique challenges — and unique risks — for Australian brands:

• First-to-file, strictly applied: China grants rights to the first filer. There is extremely limited scope to challenge a registration based on prior use in another country.
• Sub-class system: China uses a sub-class system within each Nice class. You need to identify specific sub-classes to ensure adequate protection. This requires expertise in the Chinese classification system.
• Chinese-language mark: If your brand name can be transliterated or translated into Chinese, consider filing the Chinese version as well. Consumers and competitors may create unofficial Chinese versions of your brand, and if someone else registers that version, they may have grounds to use it.
• Multi-class strategy: Because of the sub-class system and the prevalence of squatting, we often recommend filing across multiple classes in China — even classes that may seem only tangentially related to your core business — to create a defensive perimeter around your brand.
• Chinese agent required: Foreign applicants must appoint a registered Chinese trademark agent to file with the CNIPA.

What are the specific requirements for filing an EU Trademark?

The EUTM system, administered by the European Union Intellectual Property Office (EUIPO) in Alicante, Spain, is one of the most efficient and cost-effective regional filing systems available:

• Single registration, 27 countries: One EUTM registration covers all 27 EU member states. This is significantly cheaper and simpler than filing in each member state individually.
• No examination on relative grounds: EUIPO does not refuse marks based on conflicts with prior registrations. Instead, it relies on third parties to file oppositions during the publication period. This means your application may proceed to publication even if similar marks exist — but you also face opposition risk.
• Genuine use requirement: An EUTM must be put to "genuine use" in the EU within five years of registration, or it becomes vulnerable to cancellation for non-use. Use in a single EU member state is generally sufficient.
• Seniority claims: If you hold a national trademark registration in an EU member state, you can claim "seniority" in your EUTM application, preserving the earlier filing date.
• Post-Brexit note: The UK is no longer part of the EU, so an EUTM no longer covers the United Kingdom. If you need UK protection, you must file separately with the UKIPO.

How do I choose which APAC jurisdictions to file in?

Beyond China, the Asia-Pacific region includes several strategically important markets for Australian brands. Your choice of jurisdictions should be driven by:

• Current and planned commercial activity: Where are you selling or planning to sell?
• Supply chain presence: Where are your goods manufactured, stored, or transshipped? Trademarks in manufacturing countries can help you stop counterfeit goods at the source.
• First-to-file risk: Most APAC jurisdictions (Japan, South Korea, Thailand, Vietnam, Indonesia) are first-to-file. If your brand is gaining visibility in these markets, file proactively.

Hollie Ford notes: "We see Australian brands increasingly focused on South-East Asian markets — Vietnam, Thailand, Indonesia, the Philippines. These are all first-to-file jurisdictions with growing consumer markets. If your brand has any digital presence reaching these countries — even through social media or online marketplaces — we recommend getting filings in place before you formalise your distribution arrangements."

Key APAC jurisdictions to consider:

---

Building Your Phased International Filing Strategy

A phased filing strategy is the practical bridge between knowing you need international trademark protection and actually implementing it within a realistic budget and timeline. We work with brand managers to develop strategies that align with their business expansion plans while front-loading protection in the highest-risk markets.

How do I prioritise which markets to file in first?

We recommend a risk-based prioritisation framework:

Tier 1 — File immediately (even before market entry):

• China (first-to-file; high squatting risk)
• Any market where you have active sales, distributors, or manufacturing
• Any market where competitors or potential squatters may be aware of your brand

Tier 2 — File as you confirm market entry plans (3–6 months before launch):

• United States
• European Union
• United Kingdom
• Key APAC markets (Japan, South Korea, Singapore)

Tier 3 — File as you scale into new markets (6–12 months before entry):

• Secondary APAC markets (Vietnam, Thailand, Indonesia, India)
• Middle East and Africa (where applicable)
• Latin America (where applicable)

What if I cannot afford to file everywhere at once?

This is the reality for most scaling brands, and it is entirely manageable with proper planning. The key principles:

1. Protect high-risk markets first. Spending AUD $2,000–$3,000 to file in China now is vastly cheaper than spending AUD $20,000–$50,000+ to fight a squatter later.
2. Use the Madrid Protocol strategically. If you are targeting three or more markets in a single phase, Madrid can reduce your total filing costs.
3. Stage your filings across financial quarters. You do not need to file in all markets on the same day. Spread your filings across your financial year to manage cash flow.
4. Claim convention priority. Under the Paris Convention, you have six months from your first trademark filing (typically in Australia) to file in other member countries and claim the earlier filing date. This is valuable in first-to-file jurisdictions.

How do I keep track of my international trademark portfolio?

As your international portfolio grows, management becomes a genuine operational challenge. Key elements of effective portfolio management include:

• Centralised records: Maintain a single register of all your trademarks across all jurisdictions, including filing dates, registration numbers, renewal dates, and class coverage.
• Renewal calendar: Trademarks in most jurisdictions must be renewed every 10 years, but renewal dates vary. Missing a renewal can result in losing your registration.
• Use evidence collection: In jurisdictions with use requirements (US, EU, and others), you need to periodically collect and file evidence of genuine use.
• Watching services: Ongoing monitoring of trademark registers in your key markets helps you detect and respond to potentially conflicting third-party applications before they mature into registrations.

We provide portfolio management as part of our ongoing advisory relationship with clients, ensuring that nothing falls through the cracks as your brand grows internationally.

---

You Might Also Like

• Trademark Classes Explained: How to Choose the Right Classes for Your Business -- > Trademark classes in Australia are the 45 categories defined by the Nice Classification system that group all goods and services into distinct classe...
• Trademark Licensing & Assignment Glossary: Terms for Transferring and Commercialising Brand Rights -- A trademark licensing glossary defines the essential legal and commercial terms used when granting others the right to use a brand (licensing) or trans...
• Trademark Portfolio Management Glossary: Terms for Managing Marks Across Multiple Jurisdictions -- A trademark portfolio glossary is a comprehensive reference of the key legal and administrative terms used when managing registered and pending trade m...
• The Startup Founder's Guide to Brand Protection: When and How to Trademark Your Business -- > Startup brand protection means securing legal ownership of your business name, logo, and brand identity — primarily through trademark registration —...
• Trademark Classes Cheat Sheet: Picking the Right Nice Classification for Your Product or Service -- > There are 45 trademark classes under the Nice Classification system used in Australia — Classes 1–34 cover goods and Classes 35–45 cover services. To...

Frequently Asked Questions

Can I file an international trademark application without an Australian registration?

Under the Madrid Protocol, you need an existing Australian trademark application or registration as your base. However, you can file directly with national IP offices (such as the USPTO, EUIPO, or CNIPA) without any Australian filing. That said, having an Australian registration is generally advisable as the foundation of your portfolio and as a prerequisite for accessing the Madrid system.

What happens if someone opposes my international trademark application?

Opposition proceedings vary by jurisdiction. In the EU, oppositions are relatively common and are heard by EUIPO's Opposition Division. In the US, oppositions are heard by the Trademark Trial and Appeal Board (TTAB). In China, the CNIPA handles oppositions administratively. In all cases, you will need local counsel to defend your application. Costs can range from a few thousand dollars for straightforward matters to tens of thousands for complex disputes.

Can I use my trademark before it is registered internationally?

In most jurisdictions, yes — you can use a mark before registration, but you will not have the full legal protections that registration provides. In first-to-file countries, using an unregistered mark gives you very limited (if any) rights. In the US, common law rights arise from use, but federal registration provides far stronger protection.

What is a "central attack" under the Madrid Protocol?

If your base Australian application or registration is cancelled, refused, restricted, or surrendered within five years of your international registration, all Madrid designations dependent on that base may also be cancelled. This is known as a "central attack." It is one of the most significant risks of the Madrid system. To mitigate this risk, ensure your Australian mark is strong and uncontested before using it as a Madrid base. If a central attack occurs, you can convert your international designations into separate national applications in each designated country, but this involves additional costs and procedures.

Do I need to translate my trademark for different markets?

Not necessarily, but we strongly recommend it for markets like China, Japan, and South Korea where consumers may create their own translations or transliterations of your brand name. Filing both your English-language mark and a local-language version provides more comprehensive protection. In China, this is particularly important — if a competitor or squatter registers a Chinese translation of your brand name, they may be able to use it legitimately.

How do I deal with a trademark squatter who has already registered my brand?

Options vary by jurisdiction, but common strategies include:

• Opposition: If the squatter's application is still pending, you may be able to oppose it.
• Cancellation action: If the mark has already been registered, you may be able to apply for cancellation on grounds such as bad faith, non-use, or prior rights (depending on the jurisdiction's laws).
• Negotiation/purchase: In some cases, negotiating a transfer or assignment of the mark from the squatter is the most pragmatic (if frustrating) solution.
• Alternative branding: In worst-case scenarios, brands have been forced to adopt different marks in certain markets. This is an outcome we work hard to prevent through proactive filing.

In China, the CNIPA and Chinese courts have become increasingly willing to find bad faith in squatting cases, particularly where there is clear evidence that the squatter knew of the foreign brand. However, prevention is always cheaper and more effective than cure.

How often do I need to renew my international trademark registrations?

Most jurisdictions require renewal every 10 years from the filing or registration date. Under the Madrid Protocol, renewals are managed centrally through WIPO. For direct national registrations, you must renew with each individual IP office. The US has additional requirements: you must file a Declaration of Use (Section 8) between the fifth and sixth year after registration, and a combined Declaration of Use and Application for Renewal (Sections 8 and 9) every 10 years.

What role does a registered trademark attorney play in international filings?

A registered trademark attorney provides strategic advice on where and when to file, conducts clearance searches, prepares and prosecutes applications, responds to office actions and objections, coordinates with local counsel in foreign jurisdictions, and manages your portfolio on an ongoing basis. In many jurisdictions, foreign applicants are required to appoint local counsel — your Australian trademark attorney coordinates this network on your behalf, providing a single point of contact for your entire international portfolio.

---

Have questions about your international trademark strategy? Enquire now and we will connect you with our team to discuss your specific expansion plans.

---

• IP Australia Trademark Glossary: Decoding Official Terminology from the Australian Trademarks Office — A comprehensive glossary to help you understand the official terms and processes used by IP Australia.

• 11 Ways to Protect Your Brand Before You Even Register a Trademark — Practical steps you can take right now to start protecting your brand, even before your trademark application is filed.

• How to Protect Your Brand in China: Australian Business Guide to Chinese Trademarks — Our in-depth guide to navigating the Chinese trademark system, including how to deal with squatters, the sub-class system, and filing strategy for Australian businesses entering the Chinese market.

---

This article is published by Signify IP and reflects information current as of 2025. Trademark laws and official fees are subject to change. For advice tailored to your specific circumstances, please contact our team.