Video | Agriculture | Confidence | Economy | Energy | Employment | Finance | Media | Property | RBNZ | Science | SOEs | Tax | Technology | Telecoms | Tourism | Transport | Search

 


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 or base application or registration in the country of origin of the applicant for the first five years. Accordingly if the home application is unsuccessful or the home registration is revoked for any reason during this period the Madrid application also falls over.

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

© Scoop Media

 
 
 
 
 
Business Headlines | Sci-Tech Headlines

 

Scoop Business: PayPal Stops Processing Mega Payments; NZX Listing Still On

PayPal has ceased processing payments for Mega, the file storage and encryption firm looking to join the New Zealand stock market via a reverse listing of TRS Investments, amid claims it is not a legitimate cloud storage service. More>>

ALSO:

Housing Policy: Auckland Densification As Popular As Ebola, English Says

Finance Minister Bill English said calls by the Reserve Bank Governor for more densification in Auckland’s housing were “about as popular in parts of Auckland as Ebola” would be. More>>

ALSO:

Crown Accounts: NZ Government Deficit Smaller Than Expected In First Half

The New Zealand government's operating deficit was smaller than expected in the first six months of the financial year, as the consumption and corporate tax take rose ahead of forecast in December, having lagged estimates in previous months. More>>

ALSO:

Fruit & Veg Crackdown: Auckland Fruit Fly Find Under Investigation

The Ministry for Primary Industries (MPI) is investigating a find of a single male Queensland fruit fly in a surveillance trap in the Auckland suburb of Grey Lynn... MPI has placed legal controls on the movement of fruit and some vegetables outside of a defined circular area which extends 1.5km from where the fly was trapped in Grey Lynn. More>>

ALSO:

Scoop Business: Westpac NZ Reaches $2.97M Swaps Settlement

Westpac Banking Corp’s New Zealand unit has agreed to pay $2.97 million in a settlement with the Commerce Commission over the way the bank sold interest rate swaps to farmers between 2005 and 2012. More>>

ALSO:

Get More From Scoop

 
 
Standards New Zealand

Standards New Zealand
 
 
 
 
 
 
 
 
Business
Search Scoop  
 
 
Powered by Vodafone
NZ independent news