A step closer to Madrid
The Madrid Protocol is a system for the international filing of trade mark applications. Currently, a New Zealand business that wants to protect a trade mark overseas must file separate trade mark applications in each country and comply with each country’s specific requirements.
Joining the Madrid Protocol will mean New Zealand trade mark owners will be able to file international trade mark applications by filing an application for registration of a trade mark with the Intellectual Property Office of New Zealand (IPONZ). The applicant will be able to select the overseas countries for trade mark protection, so long as those countries belong to the Madrid Protocol.
Using the Madrid Protocol does not give you a registration in the countries you select, it just allows for the filing of applications in many countries at once, which can lead to cost savings. Applications are then examined by each country’s trade mark office as usual. Overseas trade mark owners will also be able to use the Madrid Protocol to protect their trade marks in New Zealand.
The recent first reading of the Trade Marks (International Treaties and Enforcement) Amendment Bill means New Zealand just got closer to joining the Madrid Protocol. The Bill contains provisions for New Zealand to join the Madrid Protocol and allows for Madrid Protocol applications to be filed in New Zealand. On current expectations, New Zealand could be a member sometime in 2010 or 2011.
The overall aim of the Madrid Protocol is to simplify the process and reduce the costs associated with the simultaneous protection of a trade mark in multiple countries.
Sound simple? Well that’s the aim of the Madrid Protocol but there are fishhooks so be careful.
Below are some of the issues trade mark owners should think about.
Why doing a clearance search is important
An application for an international trade mark must be based on a home application or registration. For most New Zealand businesses, this will be their New Zealand application or registration. If the home application or registration lapses or is invalidated within five years, the international registration will also be cancelled.
A national trade mark office examines the international application based on their national trade mark laws. They can refuse to extend protection to their country in whole or in part on several grounds including a lack of distinctiveness or a conflict with existing trade mark rights.
Therefore it is important that a thorough search be made in New Zealand (or the home country) before any local or international application is filed. Specialist advice should be considered to ensure that potential issues like existing conflicting trade marks are identified early as this may lead you to select a different problem-free trade mark and avoid those issues.
Who is a member of the Madrid Protocol?
One of the advantages highlighted with the Madrid Protocol system is the potential for cost savings. The cost will almost certainly be less than applying separately for registration in each country because both filing and renewal fees are handled as single fees by the ‘home’ country trade mark office.
But these costs savings will only apply if the countries a New Zealand business wants to register its trade mark in are members.
Currently around 67 countries are members of the Madrid Protocol including Australia, Singapore and the United States of America. But some significant current and emerging trading partners of New Zealand are missing like Canada, Hong Kong India, most of South-East Asia including Malaysia, Indonesia, Thailand and Vietnam.
What this means is that a business looking to protect its trade mark globally will need to think tactically about where it is going to seek registration and what system or systems it will use. The Madrid Protocol will provide New Zealand businesses with another choice to register its trade mark but only in certain countries. If the country of interest is not a member, then a separate national trade mark application would need to be filed.
Who can use the Madrid Protocol?
You can apply for an international trade mark registration using Madrid Protocol if:
- You have a real and effective commercial establishment in a member country; or
- You are domiciled in a member country; or
- You are a national of a member country.
How do New Zealand businesses apply for an international trade mark registration?
A New Zealand business must:
- First file for registration of its trade mark in New Zealand (the basic application),
- Then file an international application for the same trade mark, and
- Then (either simultaneously with the international application or at any time subsequently) designate particular countries (who are members of Madrid) where protection is sought.
If you want protection for a New Zealand trade mark in only a few countries (for example, say in just Australia, the United States and the European community) it may be more cost effective to file separate national trade mark applications than use the Madrid Protocol system.
Streamlining the process
Real cost savings will be achieved when changes are made to the international registration. Such changes include changes of name, changes of address, renewal and assignments. This is because these changes can be recorded by making a single request. No longer do the changes need to be recorded in each country.
But there are limits on assignments of international registrations. It is only possible to assign an international registration to a party entitled to hold an international registration under the Madrid Protocol.
Some disadvantages
The main disadvantage is the strict reliance on the ‘basic application’ for five years. If the basic application does not succeed, or is removed or is restricted in any way, the fate of the ‘international application’ will mirror that of the basic application. However, all is not lost - if this occurs you can file national applications claiming the original Protocol filing date. Unfortunately this will incur an additional cost which means the cost saving benefit of using the Madrid Protocol system is lost.
It is also not possible to expand the goods or services covered in the countries the international registration extends to beyond that covered in the basic application. Trade mark owners may therefore get narrower rights under Madrid than they could have achieved by filing national applications.
Final thoughts
As with any branding strategy, businesses need to think tactically about the most efficient and cost-effective way to register their trade mark internationally. The Madrid Protocol system will suit some businesses, but not others. However, it will be good to have another option to consider when registering your trade marks overseas.
An edited version of this article was published in NZ Retail, August 2009.
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Corinne Blumsky
Partner
