WHY A MADRID MAY NOT BE THE CHEAPER OPTION FOR AUSTRALIA.

International applications under the Madrid protocol have plenty of benefits as we all know.If your client wants to cover Australia and New Zealand, however, then Madrid may not be the best choice.

It certainly isn’t a good choice for New Zealand because they are NOT A MEMBER.

In two situations designating “Australia” in your Madrid application should be reconsidered.

First, if you have doubts about whether the mark is registrable (either it is not particularly distinctive or there is a potential citation you are aware of) then it might be better to file direct.

The other reason is related to cash flow – yours and your clients.

If you designate Australia you pay not only the Government application fee (roughly US$150 per class) but ALSO the registration fee (about US$180 per class) at the time of filing.

If the application does not proceed then you and your client “lose” the $180 per class. Even if it does proceed then IP Australia has had that money for 6-7 months and you and your client haven’t.

Whilst both these reasons are negative in nature in these rough economic circumstances clients probably want to hang onto their money for as long as possible so stretching the time out for payment of official fees – especially if there are a number of classes involved – is a small way of lessening the financial impact on you and your client.

Please get in touch if you would like to discuss this – or anything jh@brandshawker.com.au