How to prepare before applying for an International Trade Mark

To apply for an international application using the Madrid Protocol, you must have a New Zealand trade mark application or registration. The New Zealand application or registration is referred to as the “basic mark” for the international application.

The basic mark and the international application must:

1. have the same owner(s);
2. be for the identical mark(s); and
3. have the same or narrower list of goods and/or services.

You can use multiple basic marks as long as the owner and the mark details are identical.

The online form will help ensure that the mark details entered for the international application are consistent with the basic mark(s).

Important steps before you start filling out the international application form

Before you even start filling out the international application form you should make sure that the details of the basic mark and its owner details are in order, otherwise you won’t be able to submit your international application or will receive unnecessary certification objections.

1. Check the basic mark details

You need to check the basic mark to ensure:

• The representation of the mark is clear
• The ownership information is correct, see how to request change of ownership under Maintain a trade mark; and
• There are no data errors or anomalies that require correction.

2. Check the owner details for the basic mark

It is also critical that the owner details for the basic mark are correct. To check the owner details:

1. You will need to be logged on as a registered user of the website. Read more...
2. Select Maintain Client from the User menu of your Inbox. The Search Client page will display.
3. Search for your client record and select Edit to modify. You can add, or remove addresses. The following client details need to be correctly recorded:

• The owner type is correctly displayed e.g. Companies should have the owner type as “Company” not “Person”.
• The “Entitlement address” checkbox for the owner’s New Zealand physical address is checked to ensure that the address is provided to WIPO. This is one of the filing requirements under the Madrid Protocol.
• The name and address of the owner(s) is correct.
• Legal nature and State information is provided for organisations intending to file in designations such as the United States of America. This is only available to enter for applicants identified as companies.
• The email address for the owner is recorded in the IPONZ client record. WIPO will use this email address to contact you. If you are filing as an agent on behalf of an owner, it is important that the email address for your firm is correct for the same reason.

See an example below:

Investigate any special requirements of the countries you intend to designate

You should investigate the countries you intend to designate to find out if they have any special requirements. The more information that you provide in your international application to address these special requirements the less likely you are of receiving objections from these national offices during their examination of your designation for extension of protection.

Our case management facility will mark any mandatory fields with a red dot in your international application. The following are some examples of special requirements of certain countries:

• A signed MM18 declaration form for the United States of America (US)
  If the United States of America has been designated, a signed Declaration of intention to use the mark (United States of America)(MM18) must be provided.
• Second language for the European Union (EM)
  If the European Union has been designated, the applicant must indicate a second language (either Spanish, German, French or Italian) in which third parties may lodge proceedings before OHIM.
• Seniority claim information
  If the European Union has been designated, and the applicant is the owner of an identical mark already registered in a member State of the European Union they may claim seniority of that earlier mark. The effect of such a claim is that where the proprietor of the trade mark surrenders the earlier mark or allows it to lapse, they are deemed to continue to have the same rights as if that earlier mark had continued to be registered.

Read more about the Protocol and the Agreement, the procedures and information on each contracting party and copy of the forms required in the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol from WIPO.