With all great birthday celebrations, there is always an element of reflection. As we near the 10th birthday of the Madrid Protocol in Aotearoa New Zealand, it’s timely to look at the past 10 years of the system and prompt those who engaged early on that their renewal is due soon.
Since New Zealand officially became a member of the Madrid Protocol (The Protocol to the Madrid Agreement), we have seen the centralised system ease the process for many businesses seeking trade mark registration internationally.
There have been 3,985 Madrid Protocol filings from New Zealand from inception to 10 October 2022.
How does the Madrid Protocol work?
The Madrid Protocol simplifies the overall process of those seeking international trade mark protection in certain jurisdictions. It allows trade mark owners from member countries (known as Contracting Parties) to obtain trade mark protection in other member countries by filing a single international application.
Once the application is filed, national trade mark offices of the relevant member countries are notified and begin to examine applications according to their local laws. A trade mark owner using the system then acquires a bundle of rights consisting of international registration and protection in one or more designated countries.
What are the benefits of the Madrid Protocol?
With almost 4,000 filings from New Zealand through the Madrid Protocol since its inception, many businesses have taken advantage of the benefits offered, including efficiencies and cost savings. For example, they have experienced reduced costs through the initial filing, updating ownership details, or assigning their portfolios.
For those who embraced the Madrid Protocol early on, their international registration renewal and its designations will be due soon. Again, this is another area where owners can save high costs as only one transaction is required rather than multiple transactions in various countries. This could mean a larger financial outlay than you are familiar with/used to – so plan ahead.
It’s time to review your trade mark protection
The Madrid Protocol requires renewal after 10 years, so those who engaged in the system early on need to consider reviewing their intellectual property (IP) portfolio and its trade mark protection. However, regardless of whether you have filed through the Madrid Protocol, regularly reviewing your IP portfolio is important.
If there has been any change to your IP portfolio, such as a new logo, or you have/plan to enter new markets, you will need to review your current protection to ensure it remains fit for purpose.
A few of the areas we can assist with are:
- extend your international registration to new countries.
- lapse designations at renewal if you are no longer doing business in that country.
- file new international applications for new goods and services or new marks.
If your new country of interest is not a member of this protocol, we can help you explore filing stand-alone applications. It’s also a great opportunity to review your existing protection in New Zealand and Australia.
Reach out to your AJ Park contact to discuss your trade mark portfolio.
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