International trade marks

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International trade marks

Getting trade mark protection overseas can be done in two ways: Filing in each country separately, or using the Madrid System.

The Madrid Protocol

[Image] Madrid infographic - How NZ businesses are protecting their trade marks.

The Madrid Protocol is a treaty administered by the International Bureau of the World Intellectual Property Organization (WIPO). It's a way of facilitating the filing of applications overseas in one easy step.

The protocol allows trade mark owners to apply for their trade mark in over 100 participating countries by simply filing one application directly with their local trade mark office:

  • one filing in English,
  • one set of fees,
  • one place to update your details and maintain your application,
  • one global renewal date. 

New Zealand businesses constantly protect their trade marks around the world through the 'Madrid' system. You can see more details on these applications in our infographics:

Filing from New Zealand

You can use your New Zealand application as the base for your international trade mark application. This is known as a New Zealand Office of Origin (NZOO) trade mark.

If you already have an international registration, and want to add more countries, you'll need to submit your request through WIPO directly.

The top five New Zealand industries where businesses applied for overseas protection in 2016 were:

  • services for business,
  • electronics and computers,
  • pharmaceuticals, supplements and baby foods,
  • milk, meat/fish and vegetables,
  • honey, confectionery and ice cream.

Prepare to apply

Before you start filling out the international application form, make sure the details of the basic mark and its owner are in order.

See Prepare to apply for New Zealand Office of Origin trade marks.

Apply for an international trade mark

Once you've confirmed that the basic mark is suitable, you can apply for an international trade mark.

See Apply for an international trade mark.

Filing into New Zealand

It's possible to designate New Zealand in an international application originating overseas. This is called an international registration designating New Zealand (or NZD).

Maintain an international registration designating NZ

Some maintenance of international registrations designating New Zealand (NZDs) is done with us, and some is done directly with WIPO.

See Maintain an international trade mark.

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