Intellectual Property & Technology

Trademarks - Madrid Protocol

In the past New Zealand businesses wanting to protect their trademarks in their export markets had to apply to register their marks in each and every one of those export markets. This meant complicated management of overseas advisors and high costs.

On 10 December 2012 the Madrid protocol will be implemented in New Zealand. This will permit New Zealand businesses to apply for trademarks in New Zealand and overseas, all at the same time, through the Intellectual Property Office of New Zealand (IPONZ). The protocol covers 87 countries at this stage with a number of new countries expected to join very soon. Countries of interest include Australia, China, the United States, Japan, the UK and Germany.

The Madrid protocol has several advantages:

  • cost savings - although filing fees are still charged by each overseas country, so long as there is no objection to the application in that country, overseas legal advice for that country can be avoided entirely;
  • all of the overseas registrations applied for using the protocol can be managed through New Zealand and their renewal dates are aligned, greatly simplifying their management looking forward.

If an objection came in from a particular country then overseas council would need to assist with that objection.

It is also worth noting that the Madrid protocol can be used if you already have a registered mark in New Zealand, to extend that registration to another country. Any business thinking of exporting or manufacturing overseas, particularly China, should consider using the protocol to protect their existing trademarks as well as their new marks in those markets.

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John Ferner

Business, Property, Finance

The contents of this publication are general in nature and are not intended to serve as a substitute for legal advice on a specific matter. In the absence of such advice no responsibility is accepted by Brookfields for reliance on any of the information provided in this publication.

 

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