After years of deliberation and calls to join the Madrid Protocol for the International Registration of Trademarks, on 10 December 2012, New Zealand will become party to this system, which permits Trademark owners to register their Trademark in a raft of countries, under cover of a single Registration that can be extended to other member countries, as required. From this date, Applicants will be able to designate New Zealand in a Madrid Protocol Registration, in the same way that can be done for many of the most important commercial nations/territories, such as the EU (Community Trademark), the USA, China, Japan and Australia. At present, Canada still sits outside of the system and requires a national Trademark Application to be filed.
New Zealand’s accession to the Protocol will support both New Zealand and international businesses, enabling Applicants to benefit from a harmonised and simplified procedure, which reduces the cost of registration, avoiding the need for the appointment of local Trademark Attorneys and the payment of multiple fees, both on filing and renewal.
In order to designate New Zealand under cover of a Madrid Protocol Registration, a UK Company or resident requires a “home” UK Trademark Application/Registration. This “home” Application/Registration can be used as a “basis” to file a registration, via the UK Intellectual Property Office, which forwards the Registration to WIPO (the World Intellectual Property Office). After WIPO have completed their formalities examination, details of the Madrid Protocol Registration are distributed to all of the national Trademark Offices in the designated countries. Each designation will be examined in accordance with national practice and must notify the Applicant of any objections or third party oppositions within a period of 18 months (unless a request to extend this period is issued). A registration can be renewed centrally at 10 yearly intervals.
After a UK Company or resident has filed a UK Trademark Application, the benefit of “priority” can be claimed, provided that the corresponding Madrid Protocol Registration is filed within a period of 6 months after the filing date of the UK Trademark Application. By claiming “priority”, an Applicant can claim the earlier filing date of the UK Trademark Application/Registration filed 6 months earlier. This is important because most countries operate a “first come first served” system. A Madrid Protocol Registration can be filed outside of this “priority” period but the actual date of filing will be granted.
The principal disadvantage of the Madrid Protocol system is the doctrine of “central attack”. For a period of 5 years following issuance of the registration, it is dependent upon the continued existence of the “home” UK Trademark Registration. If for any reason, the UK Trademark Registration is revoked or invalidated, the Madrid Protocol Registration will fall, although it can be transformed into national Trademark Applications.
As an alternative to the system, the option of filing separate national Trademark Applications and appointing local representation in countries of interest remains. Although this route might incur increased costs, reliance upon the “home” Registration is avoided.
In light of the above, it is anticipated that existing Madrid Protocol Registration owners will look to make “subsequent designations” to cover New Zealand.