On 18 September Commerce Minister Craig Foss announced that New Zealand is closer to implementing the Madrid Protocol system of international registration of trade marks, which will "make it much easier for Kiwi businesses owners to register their trade marks in multiple countries".

In a press release Minister Craig Foss announced that Cabinet has agreed the treaty will be drafted and in force by the end of the year.

This is an exciting step for New Zealand, as it aligns our trade mark system with the trade mark systems in all of our top six major trading partners, Australia, China, United States, Japan, Republic of Korea, and the United Kingdom.

Background to Madrid Protocol in New Zealand

Our trade marks legislation was updated in 2011, and these amendments included provisions that introduced the Madrid Protocol system.

Since the legislation was passed, the Intellectual Property Office of New Zealand (IPONZ) has been preparing itself to accept Madrid Protocol filings by the end of this year.  This preparation includes three main steps.

  1. Passing the implementing regulations.  Minister Foss has confirmed these regulations are being drafted and will be in force by the end of this year.
  2. Filing the instrument of accession with the World Intellectual Property Organisation (WIPO) in Switzerland.  We understand this instrument has been filed.
  3. Updating the IPONZ case management system to accept Madrid Protocol filings.  We understand IPONZ is working hard on updating the system, and testing is expected soon.

Ability to reduce trade mark spend

One of the main advantages of the new system is the ability for a trade mark owner to significantly reduce total spend on registering trade marks overseas including reducing:

  • the initial outlay to file the applications to register their trade marks in several countries
  • downstream registration costs by possibly eliminating the need to appoint local agents in each country
  • ongoing maintenance costs as the trade mark owner needs to maintain one international registration, compared with registrations in each country.

Some points to be aware of

The Madrid Protocol system can only be relied on for registering marks in those countries who have also signed up to the Agreement and/or Protocol, currently 87 countries.  Some countries that have not adopted the Madrid Protocol system are Brazil, Argentina, Brazil, Canada, Chile, Hong Kong, India, Indonesia, Malaysia, and Taiwan, which are all growing markets for New Zealand businesses.

Understanding the new trade mark system will help trade mark owners obtain the most advantage from the new system.  Careful attention to the format and wording in the basic and international application is critical, and we recommend trade mark owners engage the expertise of a patent attorney as part of this process.