Madrid Protocol Trade Mark Filing System
Since 2012, New Zealanders have been able to use a trade mark application or registration in New Zealand to form the base on an application filed under the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”).
Not every country in the world is a member of the Madrid Protocol. While there are currently 121 different countries who are members and may be covered by a Madrid Protocol application, some National applications may still be required to cover all your key markets.
The Madrid Protocol Application Process
An application is filed through the Intellectual Property Office of New Zealand (IPONZ) and sent to the World Intellectual Property Organisation (WIPO) in Switzerland. WIPO then issues what is called an International Registration which shows the countries covered, the goods and services covered and provides a central number. WIPO then forwards the application details to the IP Office for each designated country.
At this stage the International Registration does not provide you with register rights in any country.
Each country’s IP Office will then typically conduct its own examination to make sure the application meets local requirements. It is important to bear in mind that examination costs for each designated country still need to be included into a budget for a Madrid Protocol application.
Once the application has been deemed acceptable, in most countries a trade mark application is advertised in an Official Journal and is open to opposition by third parties.
Assuming no opposition is lodged, a statement of grant then issues confirming the trade mark registration is effective in that designated country. This grant is then communicated back to the central registration at WIPO.
As each designated country communicates back to WIPO, the International Registration is updated to reflect where statements of grant or, alternatively, complete or partial refusals are issued.
Maintaining a Registration Under the Madrid Protocol
After the end of 18 months, or once each national office has completed its local examination process, the International Registration will reflect where register rights are now considered to operate.
The International Registration, in all the designated countries where a statement of grant has issued, then remains in force for an initial period of ten years from the application date. The International Registration can be renewed for subsequent periods of ten years at a time on payment of the official fee.
Advantages of Filing Under the Madrid Protocol
- A single application filed in the English language can cover many designated countries at once.
- Where multiple countries are designated, the application cost can be significantly lower than the cost of filing equivalent National applications in each country.
- If an application is straightforward and no oppositions are raised, the assistance of a local agent is not required and those agent costs can be avoided.
- Central renewal and recordal of changes at WIPO can result in a significant reduction of administration work and costs.
- Subsequent designations can be added to the International Registration at a later date.
Disadvantages of Filing Under the Madrid Protocol
An International Registration can only be assigned to an entity from another Madrid Protocol country.
- The total application costs for all designated countries must be paid in entirety at the time of filing. National applications for the same countries can be staggered to allow application costs to be spread out over time.
- Special requirements to meet local standards may mean the overall cost for some designated countries under the Madrid Protocol is more than the cost of securing a National registration where the application can be tailored to meet local requirements at filing.
- The International Registration is linked to the base trade mark application or registration for five years – a so-called dependency period. During the dependency period the trade mark cannot be assigned. In addition, a successful attack on the base trade mark in the dependency period means the International Registration will fall over. If you want to retain rights, you must incur costs in converting the International Registration into National registrations.
We recommend including the Madrid Protocol option as part of considerations for an international filing strategy, but it is important to appreciate it is not always the best filing option in every circumstance.
As part of our strategic advice we draw upon our experience in filing internationally to recommend the best way to set up a trade mark filing programme that provides you with the best coverage for your requirements and your budget.