If you are thinking of extending your business off-shore, there are some important things you should consider before you use your trade marks in another country.
- Generally speaking, trade mark rights exist on a country by country basis. If you have a trade mark registration in Australia, those rights do not automatically extend to other countries.
- You need to search overseas to ensure use of your mark in an overseas country does not infringe the rights of another party. You also need to ensure that that mark is available for you to register overseas.
- Processes, procedures and costs can be very different in overseas countries from Australia. In some countries it can take years to register a trade mark. In some countries you must demonstrate you are using your mark when you renew your trade mark registrations.
- Even if you only manufacture your goods in an overseas country and do not sell them in that overseas market, you may need to register your trade mark if the mark is applied to the goods in that country.
- In some countries it is possible for another party to register your mark if they are the first to file an application in that country. It may be very difficult for you to successfully oppose that registration.
- Lodging trade mark applications overseas can be expensive, depending on the country concerned. Obtain cost estimates and advice on an intellectual property strategy long before you make that overseas launch.
- If you are attending trade shows overseas and displaying your products and trade marks, other parties may copy your marks and register them. Register your marks in the countries of interest before you display your goods overseas.
- If you display your marks on your website you may be trading overseas, even if you trade in a .com.au domain. Seek advice on how you can secure your position overseas and not infringe another party’s rights.
REBATES FOR OVERSEAS TRADE MARK APPLICATIONS
The Federal Government’s Export Market Development Grants scheme offers financial assistance for exporters. Generally, rebates apply to export promotion and export market research which includes trade mark applications, travel or engaging a consultant. Events or trade fairs in Australia may even be eligible if they are attended by overseas buyers. However, product development, product delivery, cost of sale or administration expenses are not included.
You may be eligible for a grant which reimburses up to 50% of your export promotion expenses above $10,000 provided total expenses are at least $20,000.
Intellectual property protection expenditure including trade mark applications overseas may be eligible for these grants, if you can establish the costs were incurred for export promotion.
You should seek advice on grants available for the following:
- Travel overseas
- Participation in trade fairs, exhibitions, promotional events or seminars overseas.
- Product samples which are given away overseas
- Establishing offices overseas
- Engaging consultants in overseas countries
- Offshore manufacturing may qualify, but much depends on the amount of activity conducted in Australia
- Other companies in your group may qualify, but you should seek advice on how your group structure impacts your eligibility for grants
- Publicity and advertising overseas
- Phone, fax and email costs to overseas destinations
- Potential overseas buyers visiting you in Australia
- What you can claim for items which are used both in Australia and overseas
- What items are excluded
If you propose trading overseas, there are numerous considerations, but one of your first considerations is intellectual property protection. We can assist you with your intellectual property rights as well as government grants for which you may be eligible.
Applications for the 2011 – 12 grant year open on 1 July 2012 and close on 20 November 2012.
Author: Wendy Burnett