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December brings an important change to New Zealand trade mark law, which will have an impact on local as well as overseas trade mark owners. In this article we explain the main implications of Madrid for both local and international clients.

What is the Madrid Protocol and what does it mean for New Zealand trade mark owners?

The Madrid Protocol is an international trade mark registration system administered by the World Intellectual Property Office (WIPO). When it takes effect in December this year, New Zealand will join 86 other countries who have adopted the Madrid Protocol, including many of our closest trading partners (exceptions include Canada, Malaysia and Thailand).

A New Zealand business wanting to register a trade mark in multiple countries can file a single application at WIPO and designate any number of other countries that are also parties to the Protocol. A Madrid application must be based on an existing New Zealand trade mark application or registration covering the relevant goods and/or services.

The major benefit of a Madrid trade mark to New Zealand businesses trading in overseas markets is a reduction in filing costs, as well as reduced compliance and maintenance costs.

New Zealand businesses looking to expand overseas currently have to register trade marks on a country-by-country basis. This involves per-country filing fees and usually requires the assistance of local trade mark lawyers. Under the Madrid Protocol, an international registration is filed via a single application, and is administered centrally through WIPO. There is a base fee, and additional fees for each country designated. In many cases, this will remove the need to appoint local agents.

However, the Trade Mark Office of any individual country can still object to an application if, for instance there are earlier conflicting registrations, or if the mark is not distinctive, or the goods and/or services specified in the application do not comply with local requirements. When this happens, local agents will still be needed to deal with objections.

Madrid applications need to be prepared carefully in order to secure effective protection and take advantage of the potential cost-savings available under the Protocol. We have the necessary expertise and can help New Zealand businesses get the most out of the Madrid system.

What does it mean for trade mark owners outside New Zealand?

Overseas trade mark owners will no longer have to file a national trade mark application in New Zealand – instead New Zealand can be designated as part of a new or existing international registration.

Details of how the Madrid Protocol will work in New Zealand are still being finalised ahead of implementation, but the system will operate in New Zealand much as it does in other Madrid countries.

We are familiar with the needs of overseas brand owners and would be pleased to work with you in securing the best protection available for your trade marks in New Zealand.

For further information, or for any other assistance with regard to your organisation, contact one of our experts: Charlotte Henley on +64 4 915 5955 or Jenni Rutter on +64 9 914 7251



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