Filing international trademark applications under the Madrid Protocol in India.

The international registration and management of trademarks is facilitated by the Madrid Agreement or the Madrid Protocol or in some cases by both the Protocol and agreement and is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. India is a member of the Madrid Protocol since July 08, 2013.

As of June 20, 2015, 94 countries have joined the Madrid Protocol. A current list of the countries who are members of the Madrid Protocol is available online at the website of World Intellectual Property Organization (WIPO).

The International trademark registration process:

how-madrid-works

Image Source: WIPO

Stage 1: Basic application.

A pending application or a registration with the Indian Trademark Office (known as the basic application/registration) is a pre requisite for filing an application under the Madrid Protocol in India. The Indian Trademark Office will then certify that the information in the international application such as the mark, goods & services, color claim, etc. are as the same as that in the basic application/registration, the date on which the international application was filed and forward the application to WIPO.

Stage 2: Formal examination by WIPO.

WIPO conducts a formal examination to check if the application complies with the requirements of the Protocol and the other regulations. In case of any irregularities the same are notified to the applicant. The irregularities needs to be remedied within three months failing which the application will be treated as abandoned.

If everything is in order the application is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send the applicant a certificate of International Registration and will notify the other trademark offices in the countries that the applicant has chosen to extend the protection of the mark. This does not mean the trademark is registered in other countries. The respective trademark office in each country (trademark office of the contracting party) determines the registration of the mark in their country by substantial examination of the application.

Stage 3: Substantial examination by the trademark office of the contracting party.

The application passes through substantial examination at the trademark office of the contracting party exactly the same way as an application filed directly. The acceptance or refusal of the application is notified to WIPO within the applicable time limit (12 or 18 months). WIPO will then record the same in their records and notify the applicant about the decision of the trademark office of the contracting party. If the application is accepted then a statement of grant is issued and the registration is valid for a period of 10 years.

Any procedures subsequent to the refusal such as response to the objection, hearing, appeal etc. are to be carried out directly between the applicant and the respective trademark office without any involvement of WIPO. Once the procedures are completed and the trademark office will issue a statement to WIPO either confirming the refusal or a statement of grant following the provisional refusal. The decision is recorded by WIPO in the International Register and published in the Gazette and a copy of the decision is sent to the applicant.

Benefits of the Madrid System

  • One application in one language;
  • Payment of one set of fees;
  • Seek protection of the mark in 90+ countries;
  • Seek protection of the mark in new countries that become members of the Madrid system subsequently;
  • Automatic registration in designated countries if the trademark office does not raise an objection in 12 or 18 months;
  • Any change of applicant/ownership information, limiting goods and services, renewal of the registration, assignment/license of rights in one or more jurisdictions can be made by just filing a single application.

Disadvantage of the Madrid system

Central Attack: One of the major disadvantages of the Madrid system is that any refusal withdrawal or cancellation of the basic application/registration within five years of the registration date of the international registration will result in the refusal, withdrawal or cancellation of the international registration to the same extent. This means, if a basic application in class 29 covers goods such as ‘cheese, milk and butter’ and ‘butter’ is then deleted from the basic application (for whatever reason), ‘butter’ will also be deleted from the international application. If the basic application is rejected as a whole, the international registration would also be refused completely.

Costs: In the event of objections/refusals, appointment of local agents/attorneys is necessary to represent the applicant before the respective trademark offices. The cost of appointing local agents/attorneys negates the cost savings by filing a single application.

Conversion of International registration to national registration: It is also possible to convert an international registration to a national registration by filing an application. This process is called transformation. However it is an expensive process and is used by the applicants as a last resort to safe guard the national registrations when the international registration is challenged by a central attack. In such cases the date of international registration is treated as the filing date of national application.

Filing international trademark applications under the Madrid Protocol in India.

Indian businesses can extend their protection of their marks in 90+ countries by filing a single application with the Indian Trademark Office, in one language (English) and by paying one set of fees.

Even though the Indian businesses are to benefit from the Madrid Protocol, the truth seems otherwise. Data available at WIPO show that a meager number of applications filed in India under the Madrid Protocol against the thousands of applications filed in other countries designating India under the Madrid Protocol.

madrid-protocol-india-statistics

If you are an Indian business considering to use the Madrid system for your trademark protection you should read this excellent article on Madrid Protocol for the Indian Trademark Owner by my colleague Navarre Roy.

In conclusion, the registration of a trademark under the Madrid System does not get an International Trademark Registration per se but rather a bundle of national rights that can be centrally managed.

1 Comment. Leave new

very well written article..one of the possible reasons behind less number of applications being filed from india under the madrid protocol is the lack of awareness among applicants with respect to the benefits of such treaties..

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