Portfolio management keeps your trade marks alive, accurate and matched to your business after they are filed. We manage renewals, record ownership and address changes, extend protection as you enter new markets, and keep one list of deadlines across every country where you have rights. Watching for conflicting filings is available as a separate paid service.
A portfolio that nobody manages loses value without anyone noticing, usually through a missed renewal or an ownership record that no longer matches the business.
In summary
- Portfolio management covers renewals, recordals, new filings and designations, and reporting.
- Renewal timing differs by country. In Australia, renewal is due every 10 years. A Madrid international registration also runs for 10 years, and both have a six-month grace period after the due date at extra cost.
- Recordals come in two kinds. Updating the owner's name or address is a different request from changing who owns the mark.
- Adding a market means a subsequent designation under Madrid, or a direct filing where Madrid does not reach.
- Watching is not included as standard. We offer it as a separate paid service, and it is worth considering because a registration does not stop someone else filing a similar mark.
- Our online portal shows you where each trade mark is filed and its current status, at any time.
- You get one list of deadlines, one contact, and updates in the format that suits you.
What portfolio management covers
Five jobs, managed together.
- Inventory. Knowing which marks you own, where they are filed, which are registered or pending, which markets are not covered, and which records are out of date.
- Deadlines. Filing dates, renewal dates, grace periods, opposition deadlines, examination report deadlines and recordal dates, all in one place.
- Renewals. Planned against the legal deadline and how much the market matters to you, because a renewal is a spending decision as well as a legal one.
- Ownership and records. Company name changes, address changes, assignments, mergers and restructures all need to be recorded on the registers where you hold rights.
- Expansion. New markets and new product lines need new filings or subsequent designations.
Watching the registers for conflicting applications is a sixth job. It is not part of our standard portfolio management, but we offer it as a paid service.
A good portfolio record also holds commercial information: whether the brand is used in the country, whether the market produces revenue, whether you have a distributor there, and whether you plan to expand. That information is what lets you decide whether a renewal is worth paying for.
We manage trade mark portfolios for clients with rights in Australia and overseas.
Renewals and grace periods
Renewal timing depends on where the mark is registered.
Australia. Renewal is due every 10 years. You can renew up to a year before the due date. If you miss it, there is a six-month grace period, with a late fee for each month or part month the renewal is overdue. After that, the registration lapses.
Madrid international registrations. The term is 10 years. You can renew from six months before expiry, or within the six-month grace period after expiry with a surcharge. You can also renew for only some of the designated countries, which is useful when one market has gone quiet and another is growing.
Other national and regional registrations. Requirements vary. Some countries need local filings, extra documents, proof of use or a local agent.
Two habits keep renewals under control.
The first is to treat each renewal as a decision, not an automatic payment. Before renewing, check whether the market still matters, whether the brand is still used there, whether the goods and services still match what you sell, and whether the owner details are correct.
The second is to keep every renewal date in one calendar. In a portfolio covering several countries, the dates fall at different times and are easy to lose track of.
Recordals
A recordal updates the register when the owner's details or the ownership of the mark changes. These are two separate requests. A change of name or address is one, and a change of ownership is another.
For a Madrid registration, a change of ownership has a condition. The new owner must be a national of a Madrid System member, or have a business or domicile in one. This can catch a business that restructures into a holding company in a country outside the system, so check the ownership plan against the filing plan before the restructure.
Review your ownership records before a renewal, a licence, enforcement action, due diligence or a sale. These are the points where records that no longer match the business cause delay and cost.
Extending protection into new markets
There are two ways to add a market.
A subsequent designation adds a member country to an existing international registration. It suits a portfolio that grows market by market, and it keeps one renewal date across all the designations.
A direct national filing covers a market the Madrid System does not reach, or one where a national filing is the better fit.
Adding markets is also a good time to review the whole portfolio. A country with strong sales and no registration is a gap. A country with no commercial value and a renewal fee coming up may be one to let go. Both come from the same question: does your protection match where the business is now?
Watching
A registration does not stop someone else from filing a similar mark. A watch across the registers where you hold rights tells you about a conflicting application while there is still time to oppose it.
Watching is not included in our standard portfolio management. We offer it as a separate paid service, and you can add it for any or all of your trade marks. Our trade mark watching service sets out what a watch covers.
Coordination and reporting
You get one list of deadlines, one contact, and reporting in the format that suits you. For a portfolio across several countries, that means a single view of deadlines and status, renewals planned ahead, and a record you can hand to a licensee, an investor or a buyer as it is.
Our online portal makes this easy. Log in at any time to see exactly where each of your trade marks is filed, the status of each one, and what is coming up next. It is the same record we work from, so what you see is always current.
If you are an overseas attorney or agent, we report to you in the format that suits your practice. That work is covered on our international associate services page.
If you are taking stock of what you hold before deciding what to do next, a search is usually the first step. Our professional trade mark search service covers the Australian register, and we arrange country searches through our overseas associates.
Frequently asked questions
What does "IP portfolio" mean?
It is the collection of intellectual property rights a business owns. For a brand, that usually means its trade marks across every country where it has filed. A trade mark portfolio includes registered marks, pending applications, licence and assignment records, and the deadlines attached to all of them.
Which countries are not part of the Madrid System?
Most major markets are members, but not all. Hong Kong, for example, is not covered by China's membership. Where a market sits outside the system, protection comes from a direct national filing through a local agent. We check each of your markets against the current member list, and you can see how the two routes compare on our international trade mark services page.
How much does it cost to manage a trade mark portfolio internationally?
It depends on the number of marks, classes and countries, because official fees are charged per filing or renewal in each country. Two things affect the cost most: which markets are worth renewing, and how many need a local agent. We give you a clear estimate before any work begins and show which parts are official fees and which are ours. Get in touch and we will review what you hold and what it costs to maintain.