Madrid Protocol is Here!

On 10 December 2012, New Zealand began accepting trade mark applications under the Madrid Protocol.

What does this mean?

  • For businesses outside New Zealand, it means that they can designate New Zealand as part of their international trade mark application under the Madrid Protocol.

  • For New Zealand businesses and individuals, it means that a single international trade mark application can be made, covering the 80-something member countries of the Madrid Protocol.

The ability for international businesses to include New Zealand in their international trade mark applications is likely to increase the total number of trade mark applications made in New Zealand.  This could increase the number of likely conflicts between trade marks.

In most, but not all, cases, using the Madrid Protocol is likely to lower the cost for New Zealand businesses and individuals who are protecting their trade marks outside New Zealand.  It is also likely to lower the maintenance costs over the life of a trade mark as changes, such as addresses and renewals, can be done centrally.

There are pros and cons of using the Madrid Protocol.

The biggest likely advantage is the saving in filing costs and ease of administration.  There is also more certainty in terms of timing, as all countries are required to examine trade mark applications within 18 months.

The biggest downside is the possibility of what is called a “central attack” on the international registration.  A central attack can be made in the first five years of the life of an international registration.  The international registration can be converted to national applications, but this, of course, comes at a cost, and may mitigate any savings made at the filing stage.

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