If exporting is part of your business strategy, it's best to ensure you have legal rights to own and use your trade mark in the jurisdictions that you're planning to operate.

There are a couple of ways you can do this – by filing national applications in each country of interest, or by using the 'Madrid System' to file an 'international registration' in any of the Madrid System's 124 member countries.

The purpose of the Madrid System is to simplify the procedure and reduce the cost of registering a trade mark in multiple countries. This is achieved by filing a single application, in one language and with one set of fees, that designates the countries in which protection for the mark is required. A basic fee is charged, with supplementary charges determined by the number of countries designated. Not every country is a member of the Madrid System, however most of New Zealand's key trading partners are.

The process

We can file an international application with the New Zealand Intellectual Property Office; the NZIPO will transmit the details to the World Intellectual Property Organisation for examination. If approved, your trade mark will be added to the International Register, with an initial term of 10 years.

'National examination' follows, where each designated country examines the trade mark according to its national law. Each country can refuse to grant protection without impacting the grant of protection in the other designated countries.

The Madrid System will not always be best suited for your purposes, but if you are interested in protecting your trade mark in a number of countries, it is certainly worth considering.

To find out more if the Madrid System will work for registering your trade mark internationally, please don't hesitate to contact Tim Walden at tim.walden@jamesandwells.com

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