Intellectual Property, Auckland, New Zealand: Securing a trademark in countries like Australia, the United States, China and the United Kingdom will in future be exponentially cheaper and easier for New Zealand companies, following the Government’s decision to adopt the Madrid Protocol in September.

Intellectual property expert, Theodore Doucas of Zone IP (an intellectual property management consultancy in Wellington), said that the Trademarks Amendment Act is a major coup for the export industry.

As a signatory to the Madrid Protocol, New Zealand companies will only have to file one trademark application to secure trademark protection in more than 80 countries.

Securing a trademark in countries like Australia, the United States, China and the United Kingdom will in future be exponentially cheaper and easier for New Zealand companies, following the Government’s decision to adopt the Madrid Protocol in September.

Intellectual property expert, Theodore Doucas of Zone IP (an intellectual property management consultancy in Wellington), said that the Trademarks Amendment Act is a major coup for the export industry.

As a signatory to the Madrid Protocol, New Zealand companies will only have to file one trademark application to secure trademark protection in more than 80 countries.

“Instead of paying multiple lawyers fees overseas and having to file multiple applications, it’s now just one simple application which will save companies tens of thousands of dollars.”

Mr Doucas said that the cheaper, simpler process would enable companies to expand into international markets faster and more efficiently. It also becomes easier for companies in other signatory countries to register their trademarks in New Zealand.

Countries which are part of the Madrid Protocol include the United States, Japan and the European Union.

A company will be able to submit its trademark application to the World Intellectual Property Office (WIPO), which looks after formalities and administration. WIPO will then file the trademark with signatory countries directly. Approval of the trademark in each country would still depend on each country approving the application in that country.

“Once issued, registrations of the same mark in different countries will share the same application date and renewal date which simplifies the renewal process, rather than the different dates and times of the older, unwieldy system.

“The Madrid Protocol doesn’t necessarily cut the lawyers out. If an issue arises – such as an objection – the company registering its trademark will still have to get an attorney from that country to deal with it.”

Mr Doucas said disadvantages are few, but may include the fact that if the trademark application falls over in New Zealand, it will fall over in the other countries.

“So it’s still important to do your homework properly in the home country. Companies also need to be aware that the goods or services in the overseas applications must be the same or narrower as the one in your home country; it cannot be broader in scope.”


“The Madrid Protocol is about a year away from coming into force, because the New Zealand Intellectual Property Office is still in the process of drafting regulations around how it will work in New Zealand,” he said.


About Zone IP

ZONE IP is an intellectual property management consultancy providing authoritative advice in trade marks, copyright and branding. ZONE IP is headed by a former Assistant Commissioner of Patents, Trade Marks and Designs of the Intellectual Property Office of New Zealand (IPONZ). www.zoneip.co.nz