Madrid Protocol

15 December 2014

Building a brand offshore just got easier!

Building an export-focused business requires more than simply identifying the types of goods or the range of services you will provide overseas. Understanding the markets you want to operate in, the types of customers you are targeting, and who your competitors will be, is important. So too, will be the steps you take to protect the brand you are building to set you apart from those competitors. In many cases, part of this strategy will involve filing for trade mark protection at home and overseas.

In what is perhaps the most significant development in trade mark law in NZ in recent years, we have now joined with 86 other countries and implemented an international trade mark registration system, known as the Madrid Protocol. This means, if you have an existing trade mark application or registration in NZ, you can now file a single international trade mark application with the World Intellectual Property Organization in Switzerland, to try and obtain trade mark protection overseas.

The Protocol establishes a centralised system for the international registration of trade marks. The system is simple, cost effective and efficient. Only one application is filed, with one set of filing fees. Administrative matters are dealt with centrally, meaning less time spent co-coordinating with various intellectual property offices over the globe. The application can specify multiple countries you wish to apply for trade mark protection in (assuming those countries are a party to the Protocol), and include Australia, UK and USA. Subsequent countries can be added to the registration, allowing an efficient way for trade mark portfolios to expand over time.

If you are interested in using the system, points to watch out for include:

  • Your application must still pass scrutiny against the national requirements of each country specified in the application. If it complies, the trade mark will hold the same registration protection as if the application was filed directly in that country. If issues are raised, a local trade mark expert will need to be appointed to deal with those issues in that particular jurisdiction (potentially losing any costs savings initially made).

  • The international registration is dependent on your initial NZ trade mark remaining registered for 5 years. If your NZ registration ceases to exist, the international registration will also cease to exist. If this occurs, the international registration will need to be changed into separate national applications to maintain protection, at a further cost to you.

  • The ability to transfer or sell the registration is limited. For example, the new owner must be a national, a resident, or otherwise have an established business in NZ or in one of the countries which is a member under the system.

  • The application can only designate those countries who are signatories to the system. Canada, for example, is not a signatory. In this case, a separate application would need to be filed directly with the Canadian trade mark office for protection in that country.


Keep in mind that the system also allows overseas businesses to choose to protect their marks in NZ.  You should therefore keep a watchful eye for the filing of any marks by overseas entities in NZ which may conflict with your trade mark portfolio.

The Protocol provides an exciting opportunity for trade mark protection offshore. If you have a trade mark and trade (or plan to trade) overseas, filing an international application under the Protocol is a good option to consider.  But remember, protecting your brands on home soil is the first step. Once achieved at home, expanding that protection offshore to gain global domination of your brand has now just been made easier.


Shelley Slade-Gully is an Associate at Norris Ward McKinnon. With offices in Hamilton and Huntly, we have friendly, expert legal advisors ready to help you with your business and personal legal matters. Find out more about us here.