Madrid Protocol - The next step on the road to a single economic market between New Zealand and Australia?

As part of the final implementation steps, the Intellectual Property Office of New Zealand (IPONZ) issued a Discussion Document in May 2012, which outlined proposed amendments to the Trade Marks Regulations 2003. The amendments include necessary changes to give effect to New Zealand’s obligations under the Madrid Protocol and follow on from amendments already made in 2011 to the Trade Marks Act 2002 that implemented Madrid Protocol requirements.

While the Ministry of Economic Development (MED) has not provided a likely start date for the implementation of the Madrid Protocol in New Zealand, an MED official stated that December 2012 was “optimistic” but a best estimate was more likely to be February 2013. Implementation follows on from the New Zealand Government’s decision in 2006 to agree to pursue accession to the Madrid Protocol (as well as the Singapore Treaty and the Nice Agreement) as administered by the World Intellectual Property Organisation.

The Madrid Protocol will allow owners of New Zealand trade marks to register their trade mark rights in member countries via the filing of a single application with IPONZ based on an existing trade mark application or registration in New Zealand.  The system is intended to simplify and generally lower compliance costs associated with overseas trade mark registration.  The Madrid Protocol will also allow foreign trade mark owners to more easily register their trade marks in New Zealand (i.e. without having to file a separate trade mark application in New Zealand, which is the present case).

Details for the implementation of the Madrid Protocol are yet to be finalised, but IPONZ has indicated in its Discussion Document that all filings will be accepted electronically and that IPONZ will opt in for the 18 month refusal period (as opposed to the 12 month period).  The decisions made by IPONZ are intended to closely align with IP Australia’s current administration of the Madrid Protocol in Australia.

The close alignment also appears to further signal the ultimate goal for New Zealand to create a single economic market with Australia.  The alignment is also consistent with the announcement made in mid-2011 by the governments of New Zealand and Australia for the implementation of a simplified filing and examination process for patent applications filed in both countries by June 2014.

One difference, and in an apparent first for the administration of the Madrid Protocol, IPONZ has indicated that it will not charge a handling fee when accepting Madrid Protocol applications.  IPONZ does not intend to charge fees due to the anticipated low cost of administration because of IPONZ’s recently upgraded online filing system.  IPONZ can however review Madrid Protocol charges in 2015.

Given the imminent implementation of the Madrid Protocol, it is recommended that New Zealand trade mark owners should review their trade mark portfolio and consider registering key trade marks/brands in advance of the implementation of the Madrid Protocol, including brands/trade marks in use but not yet registered.  The rationale is that the Madrid Protocol is likely to see an increase in trade mark filings from overseas (as was the experience when Australia and Singapore joined).  The increased foreign filings could potentially impede trade mark registration by New Zealand trade mark owners or at least make it harder for New Zealand trade mark owners to register their marks.

When considering trade mark protection outside of New Zealand, trade mark owners should assess the benefits of trade mark registration via the Madrid Protocol, particularly when registration is sought in multiple countries.  In particular, it is recommended that trade mark owners should factor in the Madrid Protocol as an alternative to registering trade marks on a country-by-country basis, which is generally less cost-effective than utilising the Madrid Protocol.

It is expected that once the MED has considered the feedback relating to its Discussion Document, the proposed amendments to the Trade Marks Regulations 2003 will be adopted and IPONZ will make an announcement as to the start date for the Madrid Protocol in New Zealand.  When finally implemented New Zealand will belatedly join Australia and so enjoy the benefits of the Madrid Protocol.

This article was written by Hamish Selby for the Australasian Legal Business Magazine (issue 10.6, July 2012).  Hamish is a senior associate in the Auckland office of Buddle Findlay, one of New Zealand’s leading law firms. He is a specialist intellectual property lawyer with extensive experience advising clients in New Zealand, Australia and overseas.