Another step closer to Madrid

Article  \  1 Oct 2012

Businesses with a strong export focus will soon be able to take advantage of a trade mark system New Zealand has joined when it comes into effect.

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.

Currently around 80 countries are members of the Madrid Protocol. Many of our major trading partners are members of the Madrid Protocol including Australia, China, USA, the United Kingdom, Japan, Korea Singapore and members of the European Union. 

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.

Using the Madrid Protocol does not give you a registration in the countries you select, it merely allows for the filing of applications in many countries at once, which can lead to cost savings. Applications are 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 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.

Sounds 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.

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 is made in New Zealand (or the home country) before any local or international application is filed. Specialist advice should be sought 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. 

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. 

How do New Zealand businesses apply for an international trade mark registration?

A New Zealand business must:

  1. first file for registration of its trade mark in New Zealand (the basic application)
  2. then file an international application for the same trade mark
  3. 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.

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 extra 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.

A snapshot about international trade marks:

  • You can name over 80 countries in one international trade mark application.
  • 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. 
  • Making an international trade mark application is streamlined and could be cost effective for New Zealand business who want to protect their trade mark overseas.
  • The international trade mark system also makes it easier and cheaper for overseas businesses to file trade mark applications in New Zealand.
  • As trade mark applications by overseas businesses are likely to increase.  New Zealand businesses should ensure that their trade marks are protected before the international system comes into force in New Zealand (currently expected to be early 2013).
  •  Oppositions may increase with more overseas businesses filing under the international system, making it even more important that your trade mark portfolio is adequately protected.
  • Renewals and any changes affecting an international trade mark can be carried out centrally with a single request.

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 NZRetail magazine, issue 706.