Madrid Protocol

10 things you need to know about International Trade Marks

1. You can designate over 80 countries in one international trade mark application.
2. As new countries sign up to the international trade mark system, an application can be made to extend an existing international registration to those countries.
3. Making an international trade mark application is streamlined and will, therefore, be cheaper for New Zealand companies who want to protect their trade mark overseas.
4. The international trade mark system also makes it easier and cheaper for foreign companies to file trade mark applications in New Zealand.
5. Trade mark applications by foreign companies are likely to increase.  New Zealand companies should ensure that their trade marks are protected before the international system comes into force in New Zealand.
6. The system is likely to come into force in New Zealand in October 2012.
7. New Zealand is likely to be the first country to have an online filing system for international trade marks.
8. Oppositions may increase with more foreign companies filing under the international system, making it even more important that your trade mark portfolio is adequately protected.
9. Renewals and any transactions affecting an international trade mark can be carried out centrally with a single request, which makes administering your international trade mark cheaper.
10.  Contact Baldwins now to discuss whether your New Zealand portfolio is adequately protected or to find out if you can take advantage of the international system.

 

Big Business Bill creates trade mark rush

08/09/11 - Baldwins is advising kiwi businesses with a strong export focus to protect their intellectual property before new legislation making trade mark registration here easier for overseas companies comes into force.

The new legislation, The Trade Marks Amendment Bill, which has passed through parliament and is awaiting royal assent, brings New Zealand in line with many countries around the world through the Madrid Protocol. The Protocol allows international organisations to register a trade mark in any country which uses the Protocol in one single procedure.

Philip Thoreau, partner at Baldwins Intellectual Property, says that kiwi businesses need to be prepared and should protect their brands before the new legislation comes into force, which is expected to be mid-2012.

“New Zealand companies need to take proactive steps in response to the new legislation and ensure they have protected their trade marks by registration before the legislation comes into force.”

“We are expecting there will be a significant increase in the number of trade mark applications filed in New Zealand by offshore competitors who are already members of the Madrid Protocol. At the touch of a button, large international corporates could severely inhibit future economic growth, from local startup companies to established exporters, blocking access to key markets,” he says.

Other countries in the Madrid Protocol are many of our major trading partners including Australia, China, USA, the United Kingdom, Japan, Switzerland, Korea, Singapore, the Russia Federation, and members of the European Union.

List of Madrid Protocol Members

A list from the World Intellectual Property Organisation of members of the Madrid Agreement and the Madrid Protocol can be found via a direct link click here.

Intellectual Property Office of New Zealand comments:

"The Manager, Trade Marks of the Intellectual Property Office of New Zealand, Simon Gallagher, reported that IPONZ are building a fully electronic system for international applications filed under the new Madrid Protocol. Simon commented that "this development will assist in reducing complexity and will help to reduce compliance costs for New Zealanders filing international applications".

Related Madrid Protocol documents

These legislative changes have been a long time coming click here to see our other material related to the Madrid Protocol.