International Trade Mark application process

Since New Zealand has joined the Madrid Protocol, New Zealand trade mark applications or registrations can serve as a basis for an international application. In that case, IPONZ acts as Office of Origin and will certify the information between the national New Zealand trade mark applications or registrations and the international application.

Which form may I use? (NZOO online form) 

Applications for international registration with IPONZ as the Office of Origin must be filed electronically via IPONZ’s online case management facility. Completing and submitting the electronic form is very simple and is similar to that for making a national trade mark application with IPONZ. Also, a lot of information that must be the same as the basic application(s) or registration(s) is prepopulated on the online form for your convenience.

The online form contains the fee payment information and needs to be completed as this is a requirement of the Madrid Protocol. However, New Zealand does not handle the fees and you will be advised to pay the fees to WIPO directly once IPONZ has certified your international application and forwarded it to WIPO.

Will I need a representative?

Applicants can represent themselves to file an international application before IPONZ, or have another party act on their behalf. An international application before IPONZ must have an associated registered user of the online system to submit and receive electronic correspondence on the applicant's behalf. Read more on how to become a registered user.

Certification process

Once you are a registered user for IPONZ’s case management facility, and have logged on, select the Apply for International Registration (NZ Office of Origin) option under Trade Mark in the left-hand navigation menu to begin an application.

After the NZOO application is submitted using the case management facility IPONZ verifies the content and completeness of the international application; in particular, that the trade mark details, the owner(s), and the scope of the list of goods and services correlate to those of the basic mark. If IPONZ detects issues with the application, the Contact for the application will be notified. Otherwise, the international application is certified and forwarded electronically to the International Bureau of WIPO.

WIPO may raise issues with the application, at which point they will advise the applicant and/or IPONZ of the issues and confirm an appropriate method and date for a response. If IPONZ is notified of an issue with the application, they will investigate the issue and the Contact for the application will be notified should we require direction from the applicant to respond. 

What is the role of WIPO?

WIPO, through its International Bureau (IB), administers the Madrid Protocol together with the Madrid Agreement (the two treaties forming the so-called Madrid System). When an international application is received from an Office of Origin, the IB checks that all the filing requirements are met and that the goods and services are correctly classified. If so, it enters the mark in the International Register and it publishes it in the International Gazette. The International Bureau then forwards the international registration to the regional offices of the designated countries/contracting parties for examination.

The International Bureau does not examine whether the mark qualifies for protection, or whether an identical or similar mark has already been registered; that is a matter for the Offices of the designated contracting parties.

Is there a fee to file an international application with IPONZ? 

No, no fee is charged by IPONZ for certifying international applications based on national trade marks. However, this will be reviewed 2014-2015 to determine whether a fee is necessary. Please note: other fees for the international application are payable directly to the International Bureau of WIPO.