All you need to know about the Madrid Protocol

All you need to know about the Madrid Protocol
Heard about the Madrid Protocol, but unsure what this means for you and how it affects your trade marks in New Zealand and overseas?

Heard about the Madrid Protocol, but unsure what this means for you and how it affects your trade marks in New Zealand and overseas? Here are five tips on how you can take advantage of New Zealand's decision to join the Madrid Protocol.

lynell tuffery-huia madrid protocol idealogYou can rely on the new system to springboard your trade mark protection in other countries who are also members of the Madrid Protocol.

The international trade mark system enables you to file an international application in New Zealand and, in the same application, designate the overseas countries where you need trade mark protection.  The international application and each designation take the original filing date of the international application.

Currently 87 countries are members of the Madrid Protocol, including countries that make up a large percentage of world GDP and our top six trading partners: Australia, China, US, Japan, South Korea, Singapore, and the European Union.  The list is rapidly expanding.

 Some of the countries well known for producing counterfeit products are also members of the Madrid Protocol.  Your international registration can help you combat the distribution of counterfeit products around the world.

 

You can reduce your overall spend on protecting your trade marks around the world.

That's because the system enables you to file one application in many countries at once and also eliminates the need to appoint agents in each country when the application is filed.

As your overseas presence expands to new countries, provided those countries are also members of the Madrid Protocol, you can rely on the new system to extend your trade mark protection.

Countries can be added at any time, and in some cases, can be added as they join the Madrid Protocol.

Reviewing your home registrations with an expert before you file an international application is critical.

The international registration, and each designation, is based on your home registration.  Ensuring you have a strong trade mark, with a carefully drafted specification of goods or services, is important before filing through the Madrid Protocol system.

This review will also help avoid as many objections and oppositions in each country.  If no objections or oppositions are raised at a national level, then there is no need to appoint local agents, further reducing your overall spend on protecting your trade marks.

 

Making sure you can use your trade mark in each country before you invest in an international application is vital.

A trade mark search will be more involved under the new regime, but this is still an important step before you launch a new brand.

* The Madrid Protocol comes into force in New Zealand from December 10. Contact an expert if you require any additional information on Madrid Protocol and the Madrid system.

Lynell Tuffery-Huria is a senior associate at AJ Park