Madrid Protocol – predictions vs reality

Madrid Protocol – predictions vs reality
Madrid Protocol became part of the New Zealand intellectual property landscape on December 10. So, has it made an impact?

Madrid Protocol became part of the New Zealand intellectual property landscape on December 10. So, has it made an impact?

madrid protocol numbers - lynell tuffery huriaThe Intellectual Property Office of New Zealand (IPONZ) predicted the numbers for Madrid Protocol would be 200– 400 for the first year international applications flowing out of New Zealand (approximately 16–33 each month) and 7,000–9,000
for the first year international applications designating New Zealand (approximately 583–750 each month).

AJ Park obtained some statistics from IPONZ and the World Intellectual Property Office (WIPO) database on international applications. At January 24 this year, the current filing statistics are 33 international applications flowing out of New Zealand and 205 international applications designating New Zealand.

The figures show international applications coming out of New Zealand are in line with IPONZ predictions, but incoming applications are significantly lower than predicted. Whether the low figures are a sign of the Christmas and New Year holiday period interrupting last month, we will have to wait and see.

The figures show that New Zealand companies have embraced the Madrid Protocol trade mark registration system and see this system as an effective tool for securing trade mark registration protection around the world.

International companies also see the significance of the New Zealand market and are ensuring they have adequate protection here too. The highest number of international applications designating New Zealand originates from Europe (135), because European countries have supported the Madrid system for some time. US based companies (65) make up the largest group of filings from a single country. The figures are then made up of designations from Japan (four) and Curaçao (one).

If you’re a growing New Zealand business expanding your product or service line, ensuring your trade mark or brand is available for you to use in new markets continues to be an important step before any filing programme is undertaken.

Launching a brand without making any checks in a new market continues to be fraught with risk. It is best to contact an IP professional if you need help with any market clearance searches or checks.

In some cases, the Madrid system provides an effective mechanism for protecting trade marks efficiently and cost effectively around the world.

Lynell Tuffery-Huria is a senior associate at AJ Park, @AJParkIP