60.2.2 International Application Form

2.2.1  Relevant Legislation

Madrid Protocol

Article 3 International Applications

Madrid Protocol Regulations

Rule 8 Several Applicants

Rule 9 Requirements Concerning the International Application

Trade Mark Regulations

Regulation 17A.6 Eligibility to apply for International Registration

Regulation 17A.7 Application for International Registration

2.2.2  General Description

Division 2 of Part 17A of the Regulations deals with the filing of applications for international registration of a trade mark through IP Australia.

An application for international registration can be made on the WIPO document entitled: Application for International Registration Governed Exclusively by the Madrid Protocol. All WIPO forms relating to international registrations, including the application form (form:MM2[E]) are available from the IB (34, chemin des Colombettes, Geneva, Switzerland) and on their website (www.wipo.int). If the applicant requires more room than is provided on the WIPO form, continuation sheets may be attached.

As of 1 July 2016, IP Australia will only accept the physical MM2 form where there is maintenance being performed with the online services page or the WIPO’s eFiling system. In all other cases, the application form is accessed and submitted electronically.

Note: If the US is being designated the application form must be accompanied by form MM18 - Declaration of intention to use the mark (United States of America).  This form is also available from the IB and on the WIPO website, as well as being included in IP Australia's International Trade Marks Application Kit.

An applicant, or a legal representative, may design and submit their own form; however it must contain the same information and have the same format as the official WIPO form. IP Australia (as the Office of origin) has the right to decide whether or not such a form meets the requirements and is acceptable. The forms need not have the same spacing or exact layout as the established IB form; for example an applicant might need to increase the spacing if there is more than one owner or if more space is needed to contain lengthy specifications of goods and/or services. However, if a section is not required, it must still appear on the self-generated form.

2.2.3  Requirements for the International Application Form

The following requirements are mandatory whether provided on the official WIPO form or a form created by the applicant or representative:

• The application form must be completed in type; handwritten forms are not acceptable to the IB.

• If an electronic form is printed, the form must be on A4 paper, written on one side only.

• A self-generated form must contain the same items with their numbering and titles in the same order as they appear on the IB's prescribed form.

• Where a box is ticked the wording accompanying the box should be reproduced.

• The representation of the trade mark must not exceed 8cm x 8cm (this is the size of the box on the IB's official form).

• Where the application contains both a colour and a black and white representation of the trade mark, both should be on the same page.

2.2.4  Explanation of International Application Form

The following information is required on the application form.

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 providing the applicant’s name, email address, address for correspondence, and telephone numbers, the applicant is also required to state whether English, French or Spanish is the preferred language for correspondence sent to them from the IB. All correspondence between the applicant and IP Australia however must be in English.

Note:  Correspondence from a designated country, including any notification of a provisional refusal, may be in the national language of that country.  

Designated countries may correspond with the applicant’s address for correspondence rather than the representative who handles the applicant's communications with the IB (see point 4 below).

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. Where the entitlement to file claimed is that an applicant is either domiciled in Australia or has a real and effective commercial establishment in Australia the applicant(s) must enter the address of residence or the Australian industrial or commercial establishment in the space provided.

4. Representative

This is an optional section to be completed if the applicant has a representative who will communicate with the IB on the applicant’s behalf.

5. Basic Application or Basic Registration

An international application must be based on a trade mark/s applied for or registered with IP Australia. The owner of the trade mark must be the same, the marks identical, and the goods and/or services the same as or less than the basic trade mark. The number and filing date of the basic trade mark(s) must be included.  If the applicant has only recently filed the Australian application and does not yet know the number allocated to it by IP Australia, the basic trade mark must be described in the covering letter so that IP Australia can complete this section.  

The Madrid Protocol provides for standard, colour, three-dimensional, sound, collective and certification types of trade marks to be international applications.

The Protocol makes no provision for series of trade marks. The applicant must choose just one representation when basing the international application on a series of trade marks. 

The Protocol also makes no provision for defensive trade marks, and as such, an international registration cannot be indicated as being for a defensive trade mark. However, a defensive trade mark that is pending or registered in Australia can still form the basis for an international application. Regulation 17A.6 requires that a person applying for an international registration be the owner of a registered trade mark, or the applicant for registration of a trade mark. Under s 186, references to a trade mark are taken to include a reference to a defensive trade mark. The combined effect of these provisions means that the Registrar can under reg 17A.8 certify the defensive trade mark to be the basis for an international registration. However, the trade mark subject of the international application will be effectively treated as a ‘standard’ trade mark by the International Bureau and designated jurisdictions. This means the applicant may be subject to ‘intention to use’ and ongoing use requirements in designated jurisdictions that they are not subject to in Australia as the owner/applicant of a defensive trade mark.

6. Priority Claimed

The applicant may claim a priority date earlier than the actual filing date of the international application if they have filed the same trade mark for the first time  in a country party to the Paris Convention within 6 months prior to filing the international application (see Part 11 Convention Applications).  The basic trade mark may itself be the earlier trade mark on which the convention claim is based. A convention claim can be based on the basic Australian trade mark where this international application is filed within 6 months of filing the Australian application and the Australian application was the first filing of the mark.

7. The Mark link

A representation of the trade mark is to be attached to the space provided at box (a) on the application form. 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, a black and white representation must be placed in box (a).  If the representation on the basic trade mark is in colour, the representation in box (a) must also be in colour.  

If 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 by any means chosen by the applicant and acceptable to the Office of origin.  As the representation will be scanned for reproduction in WIPO's Official Gazette, it must be sufficiently clear for this purpose.  

The representation must fit in the square provided on the form and must be no larger than 8cm x 8cm.  If a large composite mark is reduced to 8cm by 8cm some elements in the mark may be lost.  Where this happens IP Australia cannot certify that the marks are identical.

If the trade mark is a word mark (i.e., a word/words 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 that may have criterion 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 (see point 7 above).  Any colour claim or limitation on the basic trade mark must be included on the international application.  Colour may also be claimed in an international application even if there is no such claim on the basic trade mark. If colour is claimed in an international application and there is no claim on the basic trade mark, the basic trade mark must be in the colour or combination of colours claimed in the International application.

9. Miscellaneous Indications​​​​​​​

Transliterations must be provided for characters other than Latin characters or numerals other than Arabic or Roman numerals.

The applicant is not required by the IB to provide a translation for trade marks consisting of or containing words in languages other than in English.  However, some member countries, such as Singapore, require a translation before protection can be granted.  

This section is also for the indication of trade marks which are 3-dimensional or collective, certification or guarantee marks. There are no guarantee marks in Australia.

Note:  In some countries a certification trade mark is referred to as a guarantee trade mark, whilst in others it is known as a collective trade mark.

​​​​​​​10. Goods and Services for which International Registration is Sought

Each group of goods or services must be preceded by the class number and where more than one class exists, listed in numerical order.  The goods and services claimed may 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 not be broader than that of the original basic trade mark.  The applicant must list the goods and/or services grouped in classes determined by the International Classification of Goods and Services- Nice Classification. (see Part 14.2 Classification of goods and services).

11. Designated Contracting Parties

The applicant is to tick the boxes corresponding to the countries in which protection is sought. If using a self-generated form the countries may be typed. Only countries which are party to the Madrid Protocol may be designated.  

The space under Others is for the designation of countries which have acceded to the Madrid Protocol after the form was printed.

Note: Australia cannot be designated when the international application is filed through IP Australia as Australia is the country of origin. In addition, where the European Community is designated, a second language for correspondence from the European Community must be nominated in this section.  The choices are French, German, Italian or Spanish.

12. Signature by the Applicant or his/her Representative (If required or allowed by the Office of Origin)

Neither the IB nor IP Australia requires the 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.  The Office of origin must certify that the information contained in the international application form accords with the details of the basic trade mark(s). (see point 5 above, 2.4 Certifying Process and 3 The Basic Application or Basic Registration (Basic Trade Mark ))

To ensure that the date of receipt of the international application by the Office of origin is the date of the resulting international registration, the application must be certified by the Office of origin and received by the IB within two months of receipt by the Office of origin.