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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

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