The Madrid System for the international registration of marks (or the Madrid Protocol) is a single process for obtaining trade marks in multiple countries. Since it was launched in 1996, 87 countries have signed on to make international trade mark application processes easier and cheaper – and now New Zealand is joining them.

CreateIP is recommending that our clients consider filing marks in New Zealand before the 10th of December, not only to beat the rush of local applications, but also to reduce the risk of international competition – it’s about to become a lot easier and cheaper for foreign competitors to add New Zealand to their applications too. If you do file in New Zealand before this date, we can still lodge the international applications later.

From 10 December, Madrid System applications can be made through the Intellectual Property Office of New Zealand (IPONZ) as the ‘office of origin’. IPONZ will assess and certify the application, then send it on to the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland where it gets distributed to the nominated countries. The whole process takes 12-18 months if everything goes smoothly.

Note that we always recommend establishing ‘freedom to operate’ through local country searches prior to applying, and class specification should be universal and very specific to avoid examination issues and delays (particularly in strict countries such as China and the USA).

You will still be able to file individual applications by country if you prefer, but filing centrally under the Madrid System will mean there is one repository of information on company details as well as a single renewal cycle. CreateIP also handles the administration that would have otherwise been managed across several foreign partner firms – all of which means huge efficiency gains for exporters.

Ask us at any time for an estimate of costs or further details on international trade mark filing.