If exporting is part of your business strategy, it’s best to get a head start on ensuring you have legal rights to own and use your trade mark in the jurisdictions that you’re planning to operate in. There are a couple of ways you can do this – by filing national applications in each country of interest, or by using the ‘Madrid System’ to file an ‘international registration’ in any of the 124 member countries.

The purpose of the Madrid System is to simplify the procedure and reduce the cost of registering a trade mark in multiple countries. This is achieved by filing a single application for registration, in one language and with one set of fees in one currency, designating the countries in which protection for the mark is required. Not every country is a member of the Madrid System, however most of New Zealand’s key trading partners are.

When filing an international registration, a basic fee is charged, with supplementary charges determined by the number of countries designated. Some countries charge different fees depending on the type of mark and the number of classes covered.

The process

Your trade mark professional will file an international application with the New Zealand Intellectual Property Office, who will transmit the details to the World Intellectual Property Organisation (WIPO) for examination. IfWIPO approves the application, the trade mark will be added to the International Register, with an initial term of ten years. ‘National examination’ follows, where each designated country examines the trade mark according to its national law. Each country can refuse to grant protection without impacting the grant of protection in the other designated countries.

Like any system, there are traps for the unwary and the Madrid System will not always be best suited for your purposes.

If you are interested in protecting your trade mark overseas in a number of countries, the Madrid System is certainly worth considering as the means to achieve this goal. You will, however, need to secure a trade mark registration in New Zealand first and it is very important to get it right as your “home registration” will form the basis for the International Registration and the protection you can achieve in each of the designated countries.

Tim Walden Managing Partner, James & Wells.
Tim Walden Managing Partner, James & Wells.