Businesses to benefit from international trade mark registration

Saturday 8th December 2012
Article written by: Penny Catley

After years of waiting, New Zealand has finally acceded to the Madrid Protocol.

 This means that from 10 December 2012, New Zealand businesses can utilise an international trade mark registration system to protect their brands in over 85 countries in a more efficient and cost effective manner.

Conversely, overseas businesses will also be able to extend the scope of an existing International Registration (“IR”) to cover New Zealand.

There is an immediate and substantial cost saving if you file an IR in a number of countries. This is because it is a single application instead of several applications for each country which each incur local agent fees. It will still be necessary to engage a local agent if an objection to registration is received in a particular country.

As the IR is administered as a single registration, it will be simpler and more cost effective to renew the trade mark and to attend to changes of address/name and ownership.

The owner of an existing IR can designate further countries as more countries accede to the Madrid Protocol.

While the majority of industrialised countries are members of the IR system, there are currently some notable exclusions namely Canada, India and most of the countries in South America. You will need to file separately into each one of these “excluded countries” to obtain protection.

If you only wish to protect your brand in two or three countries, the cost of setting up an international trade mark registration may be more expensive than filing in each country the “old fashioned” way.

If you are a local business and your “home” application or registration (upon which an international trade mark application is based) is successfully challenged or is unable to be registered, the international application will fail. Separate applications will need to be filed with agents in all required countries. Prior to filing an international application it is therefore advisable to ensure that your home application or registration, is secure.

While new to this country, the IR process is not new to Baldwins. We have assisted our Australian clients obtain IR and we have the experience and systems in place to manage large scale international filing programmes with ease. While this is an exciting opportunity for New Zealand businesses, one size does not fit all. Come and talk to us to see if an IR is right for your business.

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