Madrid Protocol - International Trade Mark Registrations Possible from Dec 2012

Wednesday 11th July 2012

New Zealand has adopted new legislation to join the Madrid Protocol, a system for international trade mark registration.  It is anticipated that New Zealand’s membership of the Madrid Protocol will take effect from December 2012.

This could impact on you if you’re a New Zealand individual or business that:

  • Owns a trade mark
  • Trades overseas or plans to trade overseas; and
  • Plans to protect its trade mark through trade mark registration.

How does it work?

The Madrid Protocol provides a single procedure for the registration of a mark in any country/region that is party to the Madrid Protocol. Currently, 86 countries have adopted the Madrid Protocol.  New Zealanders will be entitled to own an international registration.

Advantages: one registration, multiple markets

  • Protection can be readily sought in countries that may traditionally have been bypassed.
  • Cost-effective mechanism to protect a trade mark overseas.
  • The international registration is administered by WIPO (World Intellectual Property Office). This means that renewal, and any subsequent changes to details such as names, addresses, ownership, and assignments are managed centrally.  This will have significant cost advantages.
  • As trading activities expand and develop, additional countries can be added to the international registration by making subsequent designations.
  • An international registration lasts for 10 years and is renewable for subsequent periods of 10 years each.

Disadvantages

  • The ability to transfer or sell an international registration is restricted because the registration can only be owned by a person who is a national, domiciled or has a real and effective industrial or commercial establishment in a Madrid Protocol member country.
  • An international registration can only designate Madrid Protocol countries. It does not give a ‘worldwide trade mark’.
  • The international registration is dependant on the “basic” application/registration for five years – for most New Zealand businesses the basic application or registration will be an earlier New Zealand trade mark application or registration. Any changes to the basic application or registration will also apply to the international registration. It is important to ensure that the basic application or registration is not limited, cancelled or abandoned in this period. If the basic application or registration is cancelled or abandoned, the international registration can be transformed to national applications however, this will eliminate any cost savings gained through the international registration.

Some key points to consider in deciding whether Madrid Protocol is for you:

  • If you are interested in protecting your trade mark in a number of overseas countries then an international registration may make it easier and potentially cheaper to do so.
  • Renewals and the recording of changes of details can be done via WIPO instead of with each national office.  This will simplify and reduce the cost of dealing with and maintaining trade mark protection in multiple countries.
  • You can add new designated countries to your international registration as and when new markets arise.
  • Your New Zealand application or registration must be robust. If it does not secure registration or is cancelled within 5 years of the registration, your International registration will fall over and you will need to decide whether to incur the time and cost of transformation to national applications.
  • You may need to be more aware of what other trade marks are being filed in New Zealand, and by whom.

Contact us for more information about the Madrid Protocol.

Need more information?

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