Intellectual Property

05 Dec 2012

The Madrid Protocol: Countdown to 10 December 2012

The Madrid Protocol comes into force in New Zealand on 10 December 2012. This will allow entities in other Madrid Protocol countries to file international trade mark registrations designating New Zealand as a country to which trade mark protection would extend. New Zealand entities will also be able to file international registrations designating one or more overseas Madrid Protocol countries.

The Madrid system is a global trade mark registration system allowing the registration and maintenance of trade marks from one central filing. Once the Madrid Protocol comes into force entities in other Madrid Protocol countries will be able to file international trade mark registrations designating New Zealand as a country to which trade mark protection extends. New Zealand entities will be able to file international registrations designating one or more overseas Madrid Protocol countries.

New Zealand legal framework

In September 2011 New Zealand passed the Trade Marks Amendment Act in anticipation of adopting the Madrid Protocol. On 10 September 2012 New Zealand deposited the Instrument of Accession to the Madrid Protocol and the Ratification of the Singapore Treaty with the World Intellectual Property Organization (WIPO). The Trade Marks (International Registration) Regulations 2012 which implement the Madrid Protocol take effect on 10 December 2012.

 How does the Madrid system work?

There are two ways that the system will work:

1. Outgoing Applications - IPONZ as the Office of Origin: Madrid Applications are based on existing registration(s) or application(s) in the Office of Origin. In Madrid terminology these become known as the "Basic Registration" or the "Basic Application". In New Zealand's case the Office of Origin is the Intellectual Property Office of New Zealand (IPONZ).

Once one or more Basic Registrations or Basic Applications have been filed in New Zealand, the Applicant can then file an Application for International Registration (IR) with IPONZ. The Applicant will designate the countries where it wishes to have trade mark protection through the IR. These countries must also be signatories to the Madrid Protocol. Their examining bodies are known as the designated "Contracting Party".

IPONZ will review, certify and transmit this IR to the World Intellectual Property Organization (WIPO) International Bureau.

The International Bureau will examine the application, possibly raise objections and, once any obligations have been addressed, transmit the application back to IPONZ and to the offices of the other countries designated in the application.

Both IPONZ and the local trade mark offices in the designated countries will then conduct their usual examination of the IR. IPONZ will have 18 months to notify the International Bureau of acceptance and grant of rights or refusal of the application. Other countries may do so within 12 months - depending on their choice of timeframe.

Where a local trade mark office of a designated country raises an objection to acceptance of the IR, this will be communicated to IPONZ as the Office of Origin; IPONZ will in turn notify the applicant. Local lawyers will still be needed to address any objections in each country.

Initial guestimates suggest that IPONZ may be the Office of Origin for approximately 200 - 400 applications per year.

2. Incoming Applications - IPONZ as the designated Contracting Party: In this case the Basic Application or Basic Registration is made overseas in another Madrid system country. An IR is also filed overseas in the same country and transmitted to the WIPO International Bureau for examination. Following examination the International Bureau will transmit the IR to New Zealand as a designated country and IPONZ as the designated "Contracting Party".IPONZ is not involved in the process until it receives the IR from the WIPO International Bureau. IPONZ will then conduct an examination of the application on substantive grounds, based on New Zealand law.

Where objections are raised, New Zealand lawyers will be needed to address these. IPONZ has 18 months to notify WIPO of a refusal. Where no objections are raised (eg by IPONZ) and the 18 month time period has elapsed, the IR is deemed to be accepted by WIPO.

Initial guestimates suggest that IPONZ may be a designated contracting party for approximately 7,000 - 9,000 designations per year.

What will the Madrid system mean for you?

If you are looking to protect a trade mark internationally in different countries that are part of the Madrid system, there are many advantages, including:

  • One international application (IR) based on one or more Basic Application(s) or Basic Registration(s).
  • One designated language (French, English, Spanish).
  • One set of fees, payable to WIPO in Swiss Francs.
  • One registration number and one renewal date: International Registrations last for 10 years and must be renewed every 10 years.
  • Assigning and renewing marks can be done in a single filing (via WIPO), rather than individual filings in each country.
  • Centralised administration for global trade mark portfolios.

There are also particular issues to be aware of under the Madrid system:

  • Local trade mark law still applies when a mark is being examined. This means the IR will need to meet registration requirements in several different jurisdictions (and in the case of US designations, the Statement of Use will still need to be filed for each mark).
  • If the Basic Application filed in the country of origin is not successful or the Basic Registration is cancelled within the first five years, then the IR will also fail. This is known as the doctrine of "central attack". However, if this happens the local registrations or applications can still be transformed into individual national applications or registrations. After five years, the IR is no longer vulnerable to central attack.
  • The Basic Application or Basic Registration is the underlying basis for the IR for the first five years, so if the specifications of the Basic Application are amended or the goods and services covered by the Basic Registration are changed in any way; the IR will be similarly amended.

The goal of the Madrid Protocol is to simplify the processes for applying to register trade marks internationally. This is achieved through a centralised application, registration and administration system for trade marks.

Using the Madrid system to register your trade mark is not compulsory and may not suit your particular requirements. You may choose to continue to use more traditional methods of filing applications via local agents in each country. This will remain the procedure for those countries that are not signatories to the Madrid Protocol.

Madrid Protocol filing strategies will be useful for global trade mark portfolios. In some cases it may be more cost effective to follow the traditional method of using local agents. An assessment of cost savings via the Madrid system can depend on a number of variable factors including the type of mark, the number of classes, the number and nature of the designated countries involved, and their individual fee structures. We recommend consulting one of our trade mark experts prior to making a decision to use the Madrid system.

Simpson Grierson's leading practice is renowned for giving trade marks and other intellectual property the care and sophisticated thinking appropriate to valuable business assets. We are well placed to assist with outgoing international registrations and to address both basic and complex issues that may arise with objections and challenges to incoming national applications. Please contact us for more advice on managing your trade mark portfolio under the Madrid system.

Authors

Earl Gray

Earl Gray

Partner - Intellectual Property

DDI: +64 9 977 5002

Mobile: +64 29 977 5002

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Richard Watts

Richard Watts

Partner - Intellectual Property

DDI: +64 9 977 5182

Mobile: +64 21 895 931

Email:

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Sarah Chapman

Sarah Chapman

Senior Associate - Intellectual Property

DDI: +64 9 977 5167

Mobile: +64 21 498 965

Email:

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Claire Foggo

Claire Foggo

Senior Associate - Intellectual Property

DDI: +64 9 977 5314

Mobile: +64 21 582 674

Email:

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