The Madrid Protocol

In late 2012 New Zealand became a party to the Madrid Protocol, which now allows international trade mark applications to be filed in over 100 countries (including the  European Union, with its 28 countries).  A single trade mark application can be filed in New Zealand, and is given a single trade mark number.  Countries in which trade mark protection is desired are selected during the application stage, however additional countries can be added to the application at a later date as desired. For a list of countries and regions that are not currently members of the Madrid Protocol please click here.

Once the initial filing fee is paid based on the countries selected, there are usually no additional fees to pay until the trade mark is registered and a single renewal fee becomes payable ten years from the filing date of the International Registration.  However, some countries, such as Australia and Japan, do charge registration fees. 

Applications under the Madrid Protocol provide a cost saving over filing national applications in individual countries.  Applications will still be examined by the relevant Trade Mark Offices in each country, however it is only necessary to engage a local attorney in a country where an adverse examination report issues.  Countries known to raise Examiner’s objections are Japan and the USA and these are usually in relation to the correct classification of goods and services.  Therefore care should be taken at the time of filing the International Registration to ensure goods and/or services are classified correctly to try to avoid an Examiner’s objection being raised to the goods/services classification. 

Before you can file an International Registration you will need to file a New Zealand trade mark application, or have an existing New Zealand trade mark registration, which becomes the ‘Home Registration’.

Provided that your  “Home Registration’ remains in force for five years from filing of the International Registration then the International Registration will remain in force.

If you have a New Zealand trade mark that you wish to use overseas, or if you have concerns about an International Registration for a trade mark designating New Zealand, please contact us to discuss your options.