Asia IP

New Zealand has joined the Madrid Protocol, effective December 10, 2012. Madrid allows trademark owners from member countries to obtain trademark protection in other members countries by filing a single international application.

“If you have a strong export focus or a strong retail presence overseas, then you will be familiar with protecting your trademarks around the world,” says Corinne Blumsky, a Wellington-based partner at AJ Park. “Traditionally, you would file separate trademark applications in each country you trade in to obtain the protection you needed. While you can still file separate trademark applications in each country of interest, the Madrid system provides an alternative registration regime that can reduce your registration costs.”

After New Zealand accedes to the Madrid Protocol, it is expected that within the first year, some 7,000 to 9,000 international registrations designating New Zealand will be filed, Blumsky says. More than 18,000 trademark applications are already filed in New Zealand each year.

“Because of this increase, the ability to find a ‘clear’ trademark will become increasingly difficult,” she says. “Undertaking searches before adopting a trademark for use and registration, not only in New Zealand but in overseas markets of interest, will become even more important.”

Blumsky says she expects that many businesses who to date have shown little interest in New Zealand as a trademark filing country may start keeping an eye on their competitors. “This is because little effort is involved other than inserting a tick into the box marked New Zealand to start the process of obtaining a registration here. And the cost is fairly minimal,” she says. “New Zealand businesses therefore need to be aware of the potential for increased competitor activity.”