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International trade marks – filing directly versus filing under Madrid Protocol

When filing international trade mark applications from New Zealand or Australia it is possible to:

  1. file directly in each country of interest; or

  2. for certain countries that are party to what is called the Madrid Protocol, file one international application designating those participating countries of interest.

Filing an international trade mark application through the Madrid Protocol can be cheaper. Generally, the more countries and classes of interest, the more cost effective the Madrid Protocol is. This includes the initial upfront fees, as well as future renewal fees or transaction fees for changing the owner or address, for example.

One thing to be aware of is that the Madrid Protocol registration will be dependent on the NZ or Australian application (parent application) for 5 years. If the parent application is not registered or is cancelled during this time for whatever reason then all applications stemming from the Madrid Protocol application would be vulnerable to cancellation. Filing directly in each country avoids this possibility.

Another thing to be aware of is that under the Madrid Protocol the description of goods and services is initially restricted to what was filed for under the parent application. This means there are, depending on the particular countries, sometimes administrative objections for non-compliance with local law. These issues are normally easily addressed but can incur extra fees. Filing directly in each country allows the initial application to be tailored to help to avoid these kinds of issues.

There are other considerations, including that Madrid Protocol registrations cannot be assigned to an owner that is not subject to a country that is party to the Madrid Protocol, which may affect future sales. However, whether this is a concern depends on the circumstances and is unlikely to affect most companies.

Ultimately, whether to file international trade mark applications under the Madrid Protocol or to file directly in each country depends on the countries and classes of interest. We can advise on the options for your circumstances.

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