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International trade mark registration: the Madrid system

Trade mark rights are territorial.

There are two ways we can help you protect your trade mark overseas:

  • File separate applications to register your mark in each country of interest.
  • File an “international application for registration” (International Application) designating multiple countries under the Madrid System.

There are pros and cons to each approach.

The first approach involves filing separate trade mark applications with the local intellectual property office of each country, the most popular of which are Australia, the USA, China and the European Union. Separate fees are payable for each application.

The second approach, known as the Madrid System, is more streamlined. The Madrid System refers to two treaties, the Madrid Agreement and the Madrid Protocol.

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 for registration, designating the countries in which protection for the mark is required. The International Application is filed in one language and the application fee is paid in one currency. However, there some traps for the unwary and it is not possible to use the Madrid System to protect a trade mark in some countries.

New Zealand is a recent signatory of the Madrid Protocol, and it is expected New Zealand trade mark owners will be able to start using the System to register their trade marks internationally on 10 December 2012.

What is the Madrid system for the international registration of trade marks?

The Madrid System refers to two treaties, the Madrid Agreement and the Madrid Protocol, the purpose of which 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 for registration, in one language and with one set of fees in one currency, designating the countries in which protection for the mark is required. In this way, the Madrid System is not dissimilar to the Patent Co-operation Treaty (PCT) system in place for patents.

Not every country is a member of the Madrid System, and as such it is not possible to use the System to protect a trade mark in those countries (although protection can still be obtained by filing a national trade mark application in each country). However, most of New Zealand’s key trading partners are members of the System.

New Zealand is a recent signatory to the Madrid Protocol, and it is expected New Zealand trade mark owners will be able to start using the System to register their trade marks internationally on 10 December 2012.

How does the Madrid system work?

The Madrid System will allow New Zealand trade mark owners to file a single “international application for registration” (International Application) designating multiple countries around the world in which trade mark protection is required.

To use the System, the applicant must have a real and effective industrial or commercial establishment in, or be domiciled in or a national of, a country which is a member of either the Madrid Agreement or the Madrid Protocol. The country in which the applicant fulfils one or more of these conditions is referred to as the “country of origin”. For most New Zealand applicants this will be New Zealand (but it may also include Australia). The applicant must also have at least filed an application to register their trade mark in New Zealand, on which the International Application will be based.

For New Zealand applicants, an International Application will be filed with the New Zealand Intellectual Property Office (IPONZ). IPONZ will transmit details of the Application to the World Intellectual Property Organisation (WIPO), who administers the Madrid System. If there are any deficiencies in the application, the applicant will be notified of these and given an opportunity to correct them. If the Application complies with WIPO’s requirements, details of the mark are recorded on the International Register.

WIPO then transmits details of the International Application to the national Trade Mark Office of each designated country. At that point, each Office will examine the application according to its national trade mark law. This is known as “national examination”. If no objections are raised, each Office will issue a statement of grant of protection in the country concerned.

If any objections are raised in respect of a particular country, these will be communicated to the applicant via IPONZ. The objections will need to be overcome before protection for the mark will be granted in that country.

What is the effect of an international registration?

An International Registration produces the same effect as if an application for registration of the trade mark had been made in each of the applicant’s designated countries. However, in order for the protection for the mark under the International Registration to take effect in each designated country, protection must not be refused by the national Trade Mark Office of each country within a specified period. If an Office has no objection to the protection of the mark according to its national law, the mark will be protected in that country in the same way as if an application for registration had been lodged initially at that Office.

Can I file under the Madrid system now?

Yes, New Zealand trade mark owners are now able to use the Madrid System to register their trade marks internationally.

Is the Madrid system right for me?

If you are interested in protecting your trade mark overseas in a number of countries, then the Madrid System is certainly worth considering as the means to achieve this goal. However, the System may not be suitable for every situation. Our trade mark specialists will be able to prepare an appropriate strategy for protecting your trade mark in New Zealand and overseas.

Who can use the Madrid system?

An International Application can be filed in the name of a legal entity or by a natural person. However, for New Zealand applicants the applicant must:

  • Be a New Zealand national, or otherwise be domiciled in New Zealand or have what is referred to as “a real and effective industrial or commercial establishment” in New Zealand (which is referred to as “the country of origin”).
  • Have a New Zealand application or registration for its trade mark, referred to as the “Basic Application” or “Basic Registration”, covering the goods and/or services which are to be included in the International Application.
  • Designate one or more countries in the International Application (other than New Zealand) in which protection for the trade mark is sought.

​What countries can I designate in my international application?

Not every country is a member of the Madrid System, and as such it is not possible to use the System to protect a trade mark in those countries (although protection can still be obtained by filing a national trade mark application in each country).

The countries which may be designated under an International Application are restricted to those who are party to the same treaty, be it the Madrid Agreement or the Madrid Protocol, as the country of origin.

New Zealand is a signatory to the Madrid Protocol. Not all countries are signatories to the Protocol, and as such it is not possible to designate those countries under an International Application filed using the Madrid System. Notable exceptions include South Africa, Canada and Hong Kong.

For more information regarding the countries who are party to the Madrid Protocol, which presently number over 80, click here.

How much will the international application cost?

The cost of filing an International Application is determined with reference to the number of countries designated under the application. In short, a basic fee is charged, to which a supplementary charge is added for certain countries. Some countries charge different fees depending on the type of mark applied for (for example, a word or logo mark, and/or a colour mark), and the number of classes covered by the application.

What is an international registration?

Once WIPO examines and approves the International Application, WIPO will register the mark in the International Register and will send a certificate of registration to the applicant. This is referred to as an “International Registration”, and the period of protection is ten years from the date of registration (this is usually the date the International Application was filed with IPONZ).

However, in order for the protection for the mark under the International Registration to take effect in each designated country, protection must not be refused by the national Trade Mark Office of each country within a specified period. If an Office refuses protection for the mark according to its national law, then the mark will not be protected in that country. However, refusal of protection for the mark in one country does not impact on the protection for the mark in the other countries designated in the International Application.

What is national examination?

National examination refers to the process during which the national Trade Mark Office of each designated countries examines the trade mark according to their national trade mark law. Each country can refuse to grant protection for the trade mark without impacting the grant of protection in the other designated countries.

Generally the grounds of refusal are based on objections concerning the following:

  • The mark is generic, laudatory, descriptive or otherwise not distinctive for the goods and/or services.
  • The wording of the goods and/or services does not comply with local requirements.
  • The mark is the same or confusingly similar to an earlier mark.

If a refusal is issued in respect of a particular country, a local trade mark attorney will need to be appointed to respond to the refusal.

If my international application is still subject to to national examination in each designated country, what are the advantages of using the Madrid system?

The Madrid System offers considerable convenience to trade mark owners.

The main advantage is that you can file one trade mark application, designating multiple countries, and pay one set of filing fees. As such the Madrid System offers trade mark owners a simpler and more cost-effective means of securing worldwide protection for their brands. Owners are also able to designate further countries after the International Application has been filed, thus allowing the owner to broaden the overseas protection for its mark as desired.

Also, changes of ownership and renewals, as well as changes to applicant’s name and address, can all easily be dealt with cost-effectively via a single source, namely WIPO.

What are the disadvantages of the Madrid system?

Like any system, there are traps for the unwary and the Madrid System will not always be best suited for your purposes. It is important that the following issues are taken into account when deciding whether to use the System for protecting a trade mark overseas.

National examination

The Madrid System does not supplant local trade mark laws. Nor will it circumvent local requirements, such as the need in the US to show use of a trade mark before registration will be granted.

Central attack

An International Registration is dependent on the Basic Application or Registration for a period of 5 years from the date of International Registration. For most New Zealand trade mark owners the Basic Application or Registration will be their New Zealand application or registration for the mark. If the Basic Application is not successful, or if the Basic Registration is cancelled, the International Registration will collapse. However, all is not lost. There is provision to transform all or part of the rights under the International Registration into a national application or registration in one or more of the designated countries.

Narrowing of rights

As the International Registration is dependent on the Basic Application or Registration for 5 years, any limitations made to the basic mark may impact the rights which can be claimed in the designated countries. For example, if the goods and/or services covered by the Basic Application were narrowed, the goods and/or services covered by your International Registration will also be narrowed.

Ownership

The vulnerability of the International Registration on the basic mark for 5 years from the date of the International Registration is independent of any changes of ownership. Given this, any documentation concerning a change of ownership of the basic mark within this 5-year period must include appropriate warranties from the new owner so that the action or inaction of the new owner does not jeopardise the International Registration.