Reach of Madrid Protocol and Community Trade Mark registrations extend with new members

The Madrid Protocol provides for a system where a person or business can seek protection of its trade marks in any number of Contracting Parties, by filling out a single application form and paying the appropriate fees, rather than filing multiple applications in individual countries. For a fuller explanation of the ins and outs of an International Registration under the Madrid Protocol see our earlier article.

Since New Zealand joined on 10 December 2012, Mexico (as of 19 February 2013), India (8 July 2013), Rwanda (17 August 2013) and Tunisia (16 October 2013) have also acceded to the Madrid Protocol. Rwanda has deposited its instrument of accession with the director General of WIPO and the Madrid Protocol will enter into force with respect to Rwanda on 17 August 2013.

This Madrid system now has 92 member states accounting for over two-thirds of the world’s population. These member states include a long list of trading partners for New Zealand businesses including Australia, China, the EU (and each member state of the EU individually), India, Japan, Singapore, the UK, and the US.

The scope of protection afforded by a Community Trade Mark registration has also extended with Croatia joining the European Union as its 28th member as of 1 July 2013.

All Community Trade Marks that are already registered, or have been applied for, will be automatically extended to Croatia without any administrative requirements or cost. This guarantees that all Community Trade Marks have the same territorial scope.

While protection under the Madrid Protocol does not automatically extend to new members, it is possible to subsequently designate new members once they have acceded to the Madrid Protocol.

Elena Szentivanyi – Updated October 2013

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