Protecting your trade mark overseas

Protecting your trade mark overseas

There are two ways to protect your trade mark overseas. Firstly, you can file separate national applications via a local trade mark agent in each country of interest. Secondly, you can use the Madrid system to file a single international application with the World Intellectual Property Office (WIPO).

Which option is best for you will depend on your trade mark and the countries you are looking to cover. In most cases, if you are looking to file in multiple overseas countries then using the Madrid system is likely to be the most streamlined and cost-effective option.

What is the Madrid system

Madrid provides a centralised system for registering and managing trade marks internationally. It is administrated by WIPO. A common misconception is that by using Madrid, you secure a global trade mark which automatically covers all countries. When you file and international application, you must still select or designate all the countries you want to cover. There is a cost per designated country.

Once an application is received by WIPO, some formalities checks are done and WIPO then records the mark as an international registration. While WIPO recognises the mark as international registration, this does not mean the mark is protected in all designated countries. WIPO notifies the national intellectual property offices of the designated counties, and each office will fully examine the trade mark in accordance with its own laws (just like a national application) and determine if the mark can be registered in that country.

You can designate or add countries to your international registration at any time.

Currently, over 130 countries are part of the Madrid system. The most notable countries which are not part of Madrid are Hong Kong, Taiwan, South Africa and Argentina. National applications are required for these countries.

Benefits of the Madrid system

There’s a number of benefits to using the Madrid system. They are:

• Cost effective way to file an application covering multiple countries because you do not need to appoint a local agent at the time of filing; and
• One set of filing fees paid in one currency (Swiss Francs) to WIPO; and
• Central management of your international registration through WIPO for renewals, ownership changes, and changes of address; and
• Simple to designate/add countries to your international registration. A new application does not need to be filed.

Why it is important to get your New Zealand trade mark protection right before expanding overseas

There are two reasons why you need to ensure your New Zealand trade mark is filed correctly and is sufficiently broad enough.

Firstly, if you want to claim convention for your overseas marks then any applications filed overseas must exactly match your New Zealand application/registration. A convention claim means when you file an application in New Zealand, you then have a six-month window to file overseas while still claiming the earlier New Zealand filing date. Not only is this a great way to establish your rights overseas as early as possible, but it also means you can spread out your filing costs over a six-month period. This applies if you are using the Madrid system or if you are filing a national application.

Secondly, when using the Madrid system, your international registration must be based on a home application/registration ie your New Zealand mark. It is dependent on that home application/registration for five years. If your New Zealand mark is cancelled, withdrawn or limited, then your entire international registration is impacted in the same way. You want to avoid that happening so having a strong New Zealand mark means you will also have a strong international registration. In some cases, a trade marks owner will have a New Zealand registration but will file a new application in New Zealand to ensure it forms the solid basis required for filing overseas via the Madrid system.

If you are looking at filing overseas or need advice on whether your New Zealand application is sufficiently strong enough, get in touch with the experienced MoranLaw team today.