International trade marks now being registered from NZ

17 Dec 2012 |

New Zealand based businesses can now make a single trade mark application to the Intellectual Property Office of New Zealand (“IPONZ”) to apply for trade mark protection in over 80 countries. This enhancement took effect from 10 December 2012 as a result of New Zealand implementing the Madrid Protocol for the International Registration of Marks, which is a treaty administered by the International Bureau of the World Intellectual Property Organization (“WIPO”).

The benefit of making trade mark applications under the Madrid Protocol is that there is only one New Zealand based filing process to complete, and only one set of fees, one registration number and one renewal date. This makes applying for international trade marks, and managing your trade mark portfolio, much more straight-forward – not to mention reducing costs significantly by no longer having to file separate applications for each country.

The flipside to New Zealanders being able to file international trade mark applications with IPONZ is that it is now easier for organisations outside New Zealand to register trade marks in New Zealand. This is because IPONZ can now receive applications from international organisations designating New Zealand as a country for which trade mark protection is sought. In light of this, we recommend that New Zealand organisations review their existing protection in New Zealand for their trading names, logos and brands, in particular any which are unregistered, to avoid any potential conflict with overseas registrations.

If you would like further information in respect of the Madrid Protocol or trade mark protection of your trade names and brands, please contact us.