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International Trade Marks - Madrid Protocol 01 Oct 2014

Trade marks are jurisdictional. Therefore, New Zealand companies wishing to protect their trade marks overseas must file an application in each of the countries in which they trade. However, many New Zealand businesses over the years have found the cost of registering a trade mark overseas prohibitive. By not registering their trade mark overseas, this may leave their businesses at risk of falling foul of the trademark laws of that country.

Furthermore, some companies are not even aware that they require international trade mark protection. New Zealand businesses that accept online orders from overseas are effectively trading in that country. A New Zealand company, for example, that is based here, but sells products in the United States over the Internet, is deemed to be trading in the US and is at risk of falling foul of US trademark laws.

The good news for New Zealand companies is that New Zealand has finally adopted the Madrid Protocol, which simplifies the process and cost of protecting trade marks internationally. There are over 80 countries which are members of the Madrid Protocol including some of our major trading partners such as Australia, China, Japan, the European Union and the United States.

Under the current system, if a trade mark owner wishes to file a trade mark overseas, the usual process is to approach a trade mark lawyer here, who would then forward the application to the lawyer’s local agent overseas. For example, if a company wished to register their trade mark in Japan, their New Zealand trade mark lawyer would forward the instructions to the lawyer’s Japanese counterparts who would file the application with the Japanese Trade Marks Office.

The New Zealand client would therefore have to pay not only their New Zealand lawyer’s costs but also the cost of the Japanese lawyer and the official fees of the Japanese Trade Marks Office.

The Madrid Protocol allows the New Zealand trade mark owner the opportunity to file their trade mark directly in the foreign Trade Mark Office, avoiding the onus and cost of retaining separate overseas lawyers to submit separate applications in each jurisdiction.

The process is streamlined so that once the trade mark application is filed in New Zealand with the Intellectual Property Office of New Zealand, the New Zealand trade mark owner, or their trade mark lawyer, can submit a single application with a single payment to the World Intellectual Property Office (WIPO) to apply to register that trade mark in any Madrid Protocol member country.

Therefore, the Madrid Protocol offers New Zealand companies and trade mark owners the potential to register their marks overseas on a cost-effective basis as they expand into international markets.

Once the trade mark is registered in the overseas countries, since the registrations share the same renewal date, post-registration issues such as renewals and assignments can be undertaken

collectively by submitting a single application and paying a single fee for all of the overseas jurisdictions. This provides New Zealand business owners with the opportunity for cost-savings and ease of administration on a worldwide basis.

Even trade mark owners who currently have registered trade marks in New Zealand can make an application to extend an existing trade mark registration to the Madrid Protocol countries.

The Intellectual Property Office of New Zealand is currently drafting regulations to implement the Protocol and have indicated that this system is likely to come into force in New Zealand from December 2012.

Use of the Madrid Protocol is not mandatory. It is up to the New Zealand trade mark owner to evaluate whether a Madrid Protocol application is the most effective way to protect their trade marks in their international markets. For example, a New Zealand company only looking to file an application in one overseas country such as Australia, may find that it is cheaper to do so directly.

The cost of filing international applications through the Madrid Protocol becomes more cost effective where a trade mark owner wishes to file in a number of overseas countries.

A Madrid Protocol application does not entirely eliminate the need to retain overseas counsel. If issues arise during examination of the application by the foreign Trade Mark Office, then the New Zealand applicant will still have to retain the services of a local attorney in that country.

For this reason, we recommend retaining the services of a trade mark professional when filing a Madrid application that has an available network of overseas associates.

Theodore Doucas, Principal