By: Charlene Sell
Published: 20/01/2013
On 10 December 2012, new regulations came into force giving effect to the Madrid Protocol in New Zealand.  This means it is now easier for New Zealand trade mark owners to apply for protection of their trade marks in multiple countries and overseas trade mark owners to apply for protection of their trade marks in New Zealand.

This article discusses the Madrid System, its advantages and disadvantages and other recent changes to our trade marks legislation.

What is the Madrid System?

The Madrid System allows trade mark owners to obtain protection of their trade mark in multiple countries by filing a single international trade mark application in their national trade mark office.  Previously a New Zealand trade mark owner would need to file separate applications in each country where protection of its trade mark was sought. 

There are over 80 member parties to the Madrid Protocol, including Australia, China, European Union, Japan, United Kingdom and United States.

The Madrid System simply provides a procedure for filing trade mark applications in multiple countries.  The conditions for protecting the trade mark, the procedure for deciding whether the trade mark may be protected and the rights granted to a trade mark owner on acceptance of their application are determined by the domestic legislation in the relevant countries where protection is sought.

How does it work?

To apply for international registration under the Madrid System, the trade mark must be already registered on the New Zealand trade marks register or the applicant must have applied to the Intellectual Property Office of New Zealand (IPONZ) for registration of the trade mark in New Zealand.

If you decide to apply for international registration of your trade mark, you should first consider conducting searches for similar or identical trade marks in the countries you intend to apply to register your trade marks in and investigate whether there are any special application requirements in these countries.  You may then be able to include additional information in your international application focusing on these issues to help minimise the risk of receiving objections from the overseas trade mark offices considering your application. 

On filing your international application with IPONZ you will need to pay the application fees directly to the International Bureau of the World Intellectual Property Organization (WIPO).  IPONZ need to check and certify the application for content and completeness and then forward the application to WIPO to send on to the designated countries for examination.  The national office from each designated country will then decide whether to grant or refuse protection in that country based on their domestic legislation.

International registration lasts for 10 years and is renewable for further periods of 10 years.

We can help you with trade mark searches and preparing and filing your New Zealand and international trade mark applications.

Advantages and disadvantages of the Madrid System

If you are an exporter, implementation of the Madrid System will make it easier for you to gain protection of your brands overseas. However, it will also make it easier for overseas competitors to register trade marks that are similar or identical to your brand name if you have not registered your trade mark in New Zealand.

Applying for registration under the Madrid System may not suit everyone.  There are a number of advantages and disadvantages of applying for registration under the Madrid System rather than filing separate applications with each of the relevant countries.   
 

Advantages
  • The Madrid System will often be more cost effective because you will not need to appoint foreign attorneys in each country where the application is filed (provided the application is not refused) and only one set of fees is payable.
  • Maintaining the trade marks will be easier.  International registration is administered by WIPO so renewals, changes of ownership and updating the trade mark owner's contact details can be notified through WIPO rather than each designated country.
  • You can easily extend the international registration to new countries as your export market grows.
Disadvantages
  • Protection under the international registration remains dependent on the New Zealand trade mark remaining effective for five years from the date of the international registration.  If the New Zealand trade mark is withdrawn, cancelled or not renewed during that five year period then the international registration will no longer be protected.  If this happens you will need to make separate applications in each country.  This is particularly relevant if you are applying for New Zealand and international registration at the same time.  If IPONZ does not accept the trade mark for registration in New Zealand or registration is successfully opposed by a third party then both your New Zealand and international registrations will fall over.
  • Transfer of ownership of an international registration based on a New Zealand registered trade mark is restricted to New Zealanders or New Zealand companies.
  • It is not possible to obtain international registration of a trade mark under the Madrid System unless the country where protection is sought is a member party to the Madrid Protocol.
Other changes to our trade marks legislation

A number of other changes to the Trade Marks Regulations 2003 also came into force on 10 December 2012.  Some of the key changes include:
  • All communication with IPONZ (including trade mark applications and renewals) must now be done electronically through its online case management facility (unless exceptional circumstances exist). 
  • Increases to various trade mark fees charged by IPONZ, including the application fee to register a trade mark in one class (increase from $100 to $150 (excl. GST)) and the renewal fee for registration of a trade mark in one class (increase from $250 to $350 (excl. GST)).
If you are considering filing a domestic or international trade mark application with IPONZ to help protect your brands, please contact Charlene Sell, an associate at Wynn Williams who has specialist experience in trade mark law.
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