Madrid system for international trade mark applications
Madrid system for international trade mark applications – what you need to know
Introduction:
From 10 December 2012 IPONZ will offer New Zealand brand owners the ability to file applications to register their trade marks internationally through the Madrid Protocol system.
This means applicants wishing to trade in foreign states party to the Madrid system may file a single trade mark application and designate those states rather than file individual national applications in each separate country.
To date 85 countries have signed up to the Madrid system, including Australia, United States, United Kingdom, the European Union and Japan.
The Madrid application will then be sent to a central hub, the World Intellectual Property Organization (WIPO) in Switzerland, which in turn forwards the application to the national Trade Marks Offices of the designated countries for examination.
The examination of the Madrid application will be subject to local legislation in the designated countries and any objections or oppositions will need to be attended to by an agent in the relevant jurisdiction.
Advantages:
There are significant reductions in costs associated with the filing of a Madrid application in comparison to the filing of separate national applications.
Renewals, recording changes of name of owner, or assignments of the trade mark can be carried out centrally with a single request. Accordingly, administration of your Madrid application/registration is easier and cheaper.
National registries are allowed up to 12-18 months to accept or reject a Madrid application and this should lead to quicker registration of a trade mark in some countries.
Disadvantages:
A Madrid application is
reliant upon the National registries are allowed up to 12-18 months
to accept or reject a Madrid application and this could lead
to slower registration of a trade mark in some
countries. Considerations: The Madrid system is
likely to be used by foreign companies which can easily add
New Zealand to their list of designated countries where in
the past a national application in New Zealand may not have
made their priority list. Therefore, New Zealand brand
owners should ensure their brands are well protected in New
Zealand, ideally before the Madrid system becomes
operational. Trade mark oppositions may increase with more
foreign companies filing trade mark applications in New
Zealand. Again, this means it is important for New Zealand
brand owners to have their brands
protected. Conclusion: A trade mark application
filed through the Madrid system will make it easier and
cheaper for New Zealand brand owners to gain access to trade
mark protection in foreign markets. Whilst there are
nominal disadvantages, the advantages of filing a trade mark
application via the Madrid system are overwhelming in most
cases. Please visit EllisTerry.com for further
information on all aspects of Intellectual Property, or
email Emily Ellis at emily.ellis@ellisterry.com
if you have any questions regarding the Madrid
System. ENDS