Asia IP

New Zealand is now part of the Madrid Protocol, which allows trademark owners in New Zealand to register their trademarks in over 80 countries with only one application and one set of fees.

Commerce minister Craig Foss said in the New Zealand Herald that joining the protocol will give “a significant boost” to trademark owners in New Zealand to market products overseas. “With the Madrid Protocol, it is now easier for them to register their brands in up to 87 countries and protect their trademark as they expand into more markets,” he said.

Reciprocally, the protocol allows foreign trademark owners to register in New Zealand in the same simple way.

The protocol seemingly has advantages only but there are drawbacks, writes Alison McKenzie, a senior associate at Baldwins in Auckland. “The ability to transfer or sell an international registration is restricted because the registration can only be owned by a person who is a national, domiciled or has a real and effective industrial or commercial establishment in a Madrid Protocol member country,” she wrote on the firm’s website.

Lucy Hudson, another senior associate at the firm, notes that an international registration can only designate Madrid Protocol countries. It does not give a “worldwide trademark.”

The firm also pointed out that international registration is dependent on the “basic” application/registration for five years. “For most New Zealand businesses, the basic application or registration will be an earlier New Zealand trademark application or registration. Any changes to the basic application or registration will also apply to the international registration,” they wrote. “It is important to ensure that the basic application or registration is not limited, cancelled or abandoned in this period. If the basic application or registration is cancelled or abandoned, the international registration can be transformed to national applications. However, this will eliminate any cost savings gained through the international registration.”