In the year 2013, the Madrid Protocol was adopted by India. The Madrid Protocol is a treaty administered by the World Intellectual Property Organisation (WIPO). To simplify the process of filing the International Registration of Trademarks applications across several jurisdictions, the Madrid Protocol was introduced in India. In India, every region has a different system for Trademark Registration. The Madrid Protocol in India was introduced to provide a system of Registration of Trademark, which is convenient to all. In the article, we will discuss the complete overview of the Madrid Protocol in India.
What is Madrid Protocol?
Any person who wants to protect his/her Trademark had to get his/her Trademark registered in the country where he/she wants to protect it from being used illegally. Whenever a Trademark Registration is granted by a particular country, the Registration served to protect the interest of the applicant or owner in that country only. In case where any person who wants to protect his/her Trademark internationally was required to file for Registration of Trademark in each country individually where such protection of Trademark was sought. Hence, filing multiple applications created a lot of confusion and convenience to the applicants or owners of the Trademark. The cost of filing applications in several countries was also huge for the applicant. The introduction of the Madrid Protocol in India was a one-stop solution for all such problems related to the Registration of Trademark.
The Madrid Protocol provides for the International Trademark Registration. The Registration can be done by just making one application in which more than one country can be covered. The prospect of filing only a single Registration application to cover a wide range of countries gives advantages, in terms of both portfolio administration and cost savings, as opposed to a portfolio of several independent National Registrations.
Certain amendments were made in the Indian Trademarks Law to comply with the Madrid System, after India became a member of the system of Madrid Protocol. On 21st September, 2010, the Trademarks (Amendment) Act, 2010, was passed to bring into force the Madrid Protocol system in India. The amendment in the Trademarks Act led to the addition of Chapter IVA comprising of Section 36A to Section 36G in the Trademarks Act, 1999. Chapter IVA of Trademarks Act, 1999[1], explicitly focused on the “Special Provisions” relating to Trademarks Protection through International Registration of marks under the Madrid Protocol in India.
The Madrid Protocol permits the Trademarks Registration in several jurisdictions universally that are part of Madrid Union’s member countries. The Registration can be done by filing a single application in the national trademark office or regional trademark office of the applicant. The introduction of the Madrid Protocol in India helped in the easement of the procedure for applying for Trademark Registration and also made easy the subsequent management related to the Trademark Registration. By providing a ‘basic application’ or ‘basic Registration’ in any member country of Madrid Protocol, now any person can designate India and get International Registration or Trademark protection in India.
The use of the Madrid Protocol today is a vital factor for any successful branding policy. The Madrid Protocol offers the owner of Trademark an early presence of brand at a global level. It helps the owner speedily for acquiring international reputation and generating goodwill of his/her registered Trademarks overseas. The Protocol also ensures the legal protection of the brand of the registered owner against a large number of competitors in export markets. The other benefits available with the Madrid Protocol are that it helps in an increase of franchising opportunities for the owner, opening of partnership possibilities, and simplifies incorporation to global supply chains. In general, the Madrid Protocol provides the utmost effective support to the branding policies and business success to the owner of the Trademark.
What are the essential requirements for filing an International Trademark Application under the Madrid Protocol in India?
The International Registration of Trademark applications can be filed in India under the Madrid Protocol. The International application can only be filed in India when India is either the country of origin or the designated country in the application. In case India is the country of origin, the Trademarks Registry of India (TMR) will receive the International applications from applicant for International Registrations of Trademark in India. On the other hand, in case India being the designated country in the International Registration application, the International Trademark Registration application should be filed with World Intellectual Property Organisation (WIPO), selecting the country India as the designated country.
The basic requirements for filing an International Trademark Registration under the Madrid Protocol in India application are as follows:
- The applicant should be eligible for filing the international application;
- The applicant should be an Indian national;
- There should be a place of business in the territory of India;
- An already existing Trademark Application should be there available with the applicant;
- There should be a designation of more than one country where protection is required should be provided in the International registration application.
What is the procedure for International Trademark Registrations under Madrid Protocol in India?
To extend the business to various or all countries under the Madrid Protocol, the Indian entrepreneurs and companies are now expeditiously obtaining International Registrations. The International Registration can be obtained by just filing a single application with any of the concerned Trademark Office in India. The procedure for obtaining the International Registration can be broadly divided into three stages. The three stages of International Registration are as follows:
Stage I: Filing of Application for International Registration
For filing an International Registration application under Madrid Protocol, the presence of a formerly filed or registered Trademark with the relevant regional Trademark Office of India is needed. After receiving an International Registration application, the domestic Indian Trademark Office will verify the contents of the international application with the help of the formerly filed or registered application of the Trademark specified in the new international application.
Once getting satisfied with the suitability and perfectness of the specified Trademark for Indian and International Registrations under Madrid Protocol, the Trademark Office of India should forward the International Registration application to the International Bureau (IB) of World Intellectual Property Organisation (WIPO) located in Geneva, for further processing of the application.
Stage II: Examination and Approval of Application by WIPO
After receiving the International Registration application from the Trademark Office of India, the International Bureau (IB) of World Intellectual Property Organisation (WIPO) will examine the essential requirements and appropriateness for the International Registration of the application for International Registration. In the case of the perfectness and appropriateness of the international application, the International Bureau (IB) will record the application in the International Register. Once the application is recorded in the International Register, the application will be published in the World Intellectual Property Organisation (WIPO) Gazette of International Trademarks. At the time of publishing of the international application in the gazette, a notification regarding the international application should be sent to the targeted contracting countries by the applicant of the application.
In case of any flaws or irregularities in the international application, the applicant of the international registration application will be promptly informed about such flaws or regularities. A period of 3 months is given to the applicant for satisfying the International Bureau (IB) with his/her remedies. The targeted countries in the application are requested to a critical and thorough examination of the international Registration application as per the Trademark Rules and regulations of the targeted countries. The targeted countries should submit their examination report to the International Bureau (IB) of the World Intellectual Property Organisation (WIPO) within 12 to 18 months.
Stage III: Examination and Approval of the Trademark Office of each Designated Country
In the third stage, the International registration application will pass through critical and substantive examination at the Trademark Offices of each designated country in the application, as if the international application was filed directly with the appropriate office for International Registration. After examination, the designated countries in the application will then notify the respective acceptance or refusal of the application to the World Intellectual Property Organisation (WIPO). The acceptance or refusal of the application should be notified to the World Intellectual Property Organisation (WIPO) within the prescribed time period of 12 to 18 months.
In case all the designated countries accepted the application, then the application will be registered under the Madrid Protocol for a period of 10 years. After the acceptance, a statement of the grant will be issued to the applicant. On the contrary, in case the application is refused by the designated country, the subsequent procedures related to refusal of application will be conducted directly between the applicant and the concerned member country of Madrid Protocol. The refusal procedures included responses, appeal, hearing, prosecution. In the whole refusal procedures, the involvement of the World Intellectual Property Organisation (WIPO) should not be there.
Read our article:Basic Definition of Trademark Registration, Objection and Assignment
What documents are required for filing International Registration under Madrid Protocol in India?
The documents required for filing International Registration under Madrid Protocol in India are as follows:
- The application of the International Trademark registration should be attached with an application form;
- In case the applicant is not owner itself of the Trademark, then a Power of Attorney in favor of the person who is an applicant of International Registration application should be attached with the International application;
- The amount of handling fees should be paid with the International application;
- The International Designation fee should be paid with the International application. The designated fees should be paid in Swiss Francs and is payable to the World Intellectual Property Organisation (WIPO).
Where
can the Renewal application can be made for International Application under
Madrid Protocol in India?
An application for Renewal
of an International Trademark Registration application designating the country
India can only be made only at World Intellectual Property Organisation (WIPO),
and the WIPO should notify the Trademark registry of India about the renewal
application. The Renewal of application can be done by just filing a single
application for the Renewal of the International Trademark registration
application.
What are the advantages associated with the Madrid Protocol in India?
The advantages of the Madrid Protocol in India are as follows:
- The Protocol is a cost-effective and more convenient method;
- The Protocol prevents the multiplicity of applications;
- Any person can get the protection of mark throughout the world by making a single application and by payment of a single set of fees as it has a centralized process for Trademark application;
- The process is less time-taking;
- The applications of Protocol can be in Spanish, English and French, which is an advantage for countries like India as it is a non-French speaking jurisdiction;
- The details of the holder of rights can be changed by just sending a single document to the International Bureau. No extra efforts are to be made and each national office for changes to be made in the details of the holder.
- It is easy to add and subsequently elect the country which is a member at a date later under the same International Registration of a mark under the Madrid Protocol. The maintenance and filing fees associated with the application of International Registration is lower over time than maintaining various separate National Registrations.
Conclusion
The Madrid Protocol offers an attractive route to protect the brand in different countries around the world. The Madrid Protocol also helps by making available user-friendly and cost-effective procedures for acquiring and managing the Trademark rights overseas. Any person being a national of India, or having a domicile of India or having an organization in India, he/she is entitled to use the Madrid Protocol system that is joined by India in the year 2013. The application for International Trademark Registration should be filed by the applicant for protecting his/her Trademark in India as well as abroad. The process of filing an International Trademark Registration application under the Madrid Protocol in India is time-taking and long-lasting. We at Corpbiz have professionals to guide you with the procedure of filing for application for International Registration under the Madrid Protocol in India. Our professionals will guide and assist you throughout the procedure. Our professionals will ensure the effective and successful completion of your work.
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