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:
- have the same owner(s)
- be for the identical mark(s)
- have the same or a 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).
Before you start filling out the international application form, 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.
If you intend to claim an earlier convention priority date based on your New Zealand application, you will need to file your international application within 6 months of the filing date of your basic mark.
1. Check the basic mark details
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)
- there are no data errors or anomalies that need correction.
Note: If your basic mark is in colour and you want the mark on your international application to be in black and white, you'll need to make an Amendment or Alteration request, uploading a black and white image of the mark and have it accepted before beginning your international application.
Also, if there are outstanding objections on your basic mark, you may wish to resolve these prior to filing an international application. Any changes made to your basic mark could result in changes to your international registration.
It's critical that the owner details for the basic mark are correct. To check them:
- Log in to our case management facility (buttons at top right of screen).
- Select Maintain Client from the User menu of your Inbox. The Search IPONZ Client Database page displays.
- Search for your client record and select Edit to modify. You can add or remove addresses.
- The following client details need to be correct:
- The correct owner type should be displayed (eg companies should have the owner type as ‘Company' not ‘Person’).
- Check the Entitlement address checkbox for the owner’s New Zealand physical address 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).
- The email address for the owner(s). This is a filing requirement, and WIPO will use this email address to contact you. If you are filing as an agent on behalf of an owner, you must provide both of your email addresses for the same reason.
- 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.
You should investigate the countries you intend to designate to find out if they have any special requirements. More details can be found in WIPO's Madrid Member information and Global Brand Database.
The more information that you provide in your international application to address these special requirements, the less likely you are to receive objections from these national offices during their examination of your application.
The following are 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, you must provide a signed Declaration of intention to use the mark (United States of America) (MM18). Read more about filing tips when designating for the United States of America to avoid formality refusals.
- Second language for the European Union
If the European Union has been designated, you must indicate a second language (either Spanish, German, French or Italian) in which third parties may lodge proceedings before the European Union Intellectual Property Office (EUIPO).
- 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 when the owner 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.
Note: Our case management facility marks any mandatory fields with a red dot in your international application.
Useful WIPO resources
WIPO has the following guides available on its website:
- Guide to the procedures, information and time frames of the contracting parties
- Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (information about the Madrid Protocol and Agreement and copies of the forms required).