Streamline your tax compliance with our expert-assisted GSTR 9 & 9C services @ ₹14,999/-

Tax efficiency, interest avoidance, and financial control with advance payment @ 4999/-
Trademarks

Madrid Protocol: Countries covered for Trademark Registration

The Madrid protocol enables an applicant to file an international trademark application across several countries by filing a single application. The Madrid protocol thereby saves time and cost, avoiding the filing of a plethora of applications to every other country individually.

A trademark establishes the brand image through letters, words, phrases, taglines, images, or logos for the goods or services it is attached to. It confers on the proprietor the exclusive right to market the goods and services through the registered trademark while it averts any third party from using the same. In India, the obtaining of a trademark is governed by the Trademarks Act, 1999, and the Trademark Rules, 2017.

With the advent of globalisation, several businesses aim to travel far and beyond the borders and set their foot in foreign countries. Trademark being a territorial right, demands to be filed separately each time in every single country the business wishes to spread its wings. But this process could be highly turbulent and utterly time and cost-consuming. Therefore, there came a need for a single international trademark application. This need was sufficed through the Madrid Protocol.

Madrid Protocol and International Trademark Registration:

Although there is no such provision called an “International Trademark”, the Madrid Protocol serves to achieve it by enabling the filing of trademarks to several countries at a single time. This international system, which came into effect in 1996 and is administered by the WIPO (World Intellectual Property Organisation), enables the applicant to obtain trademarks across the countries that are signatories to the protocol. India became a signatory to the Madrid Protocol in 2013, thus enabling the Indian trademarks to be filed across several jurisdictions with minimal effort. The applicant ideally has to fill out a single application and would be able to apply for the trademark registration across several countries that are signatories to the Madrid Protocol.

You can check trademark availability with Vakilsearch’s free Trademark Search tool before registering a trademark.

Adoption of the Madrid Protocol in India:

The Trademarks (Amendment) Act, 2010, came into effect to accommodate the principles of the Madrid Protocol into the Indian trademark laws. Chapter IVA which includes Sections 36A to 36G in the Trademarks Act, 1999 was included as special provisions relating to the protection of trademarks through international registration under the Madrid Protocol. The protocol basically involves getting the trademark registered in one of the member nations, say India, and thereafter by designating India as the regional trademark office, in this case, the applicant can get an International registration with respect to the other member nations of the Madrid protocol.

Prerequisites for Filing an International Trademark Application Under the Madrid Protocol:

The most basic criteria to file an application under the Madrid protocol is, India should either be the country of origin or the designated country for the application. In the former case, the Indian Trademarks Registry (TMR) will accept trademark applications for the purpose of international registration. If India acts as the designated country in the application for international registration, the application should be filed with the WIPO, opting for India as the designated country.

The basic requirements to file an international application under the Madrid protocol in India are listed below:

  •   The applicant should have the eligibility to file an international application
  •   The applicant should be of Indian nationality
  •  Further, the applicant should possess a business location within the Indian territory
  •   The applicant should be holding a registered trademark application at the time of making an international application
  •   The applicant should essentially be seeking trademark protection in more than one country and the same should be illustrated in the application.

Procedure for Trademark Registration through the Madrid Protocol:

But for the Madrid protocol, the businesses would be spending all their valuable time in making several trademark applications directed to the registries of various nations. The Madrid protocol has helped several Indian businesses to launch their brands in the international market by simply filing a single application with any Indian trademark office. The registration through the Madrid protocol happens across three broad stages as illustrated below:

Stage 1: Filing the International Trademark Registration Application:

The first requisite to file an international application is to possess a trademark application registered formerly within India. Once an application for international registration is received by the Indian trademark office, the application is thoroughly examined by the examiner. The registration that was earlier obtained with the Indian trademark office should be mentioned in the application and the same will be taken as a reference to examine the international application.

If the examiner does not find any disparities in the international application, the Indian trademark office forwards the international application to the International Bureau (IB) of WIPO seated in Geneva, for the further stages of examination of the application.

Learn more about Register Your Trademark

Stage 2: Examination of the Application by WIPO

Once the IB receives the application for the international registration of a trademark from the Indian Trademark Registry, the application is scanned for the requirements for getting the registration accomplished internationally. If the application is appropriate, the IB registers the application in the International Register. Thereafter, the application gets published in the WIPO Gazette of International Trademarks. At this juncture, a notification with reference to this international application will be sent to the contracting countries wherein the applicant intends to get the trademark registered. It is pertinent to note that the application can be sent only to those countries that are signatories to the Madrid protocol.

If the IB comes across any errors or discrepancies in the application, the same will be notified to the applicant. The applicant is required to provide responses pertaining to the issues raised by the IB within a period of 3 months. On the other hand, the respective trademark offices of the countries specified in the international application, examine the application as per their domestic trademark rules and furnish their examination reports to the IB within a period of 12 to 18 months.

Stage 3: Examination of the Application by the Trademark Offices of the Designated Countries

This stage involves the application being scrutinized at the respective trademark offices of the designated countries chosen by the applicant. The application is treated in the same way if it would have been directly filed through these offices to get a trademark registration in the respective countries. Once the examination is done, the respective trademark offices notify WIPO regarding their acceptance or refusal of the applications within 12 to 18 months from the date of receiving the applications.

If all the designated countries accept the registration, international trademark registration is obtained and registered under the Madrid protocol for a period of 10 years. Thereafter, the applicant is issued a statement of the grant by the trademark offices. In case the application is rejected by one or more countries, the usual procedures of filing office actions, responses, and prosecution ensue between the applicant and the respective member countries. During this process, the WIPO would show no traces of interference between the applicant and the member countries.

The renewal of the trademark registration can be done at WIPO, wherein the Indian trademark office will be notified by WIPO thereafter. The renewal can be done simultaneously in all the designated countries the trademark was earlier registered by making a single application.

Documents Required for Filing the International Application:

  •   The registered trademark application has to be submitted along with the international application
  •   In case the applicant is not the owner of the trademark to be registered a power of attorney in favor of the applicant has to be attached
  •   The fee for the international application comprises the basic fee, a complementary fee for the contracting party designated, and a supplementary fee for each class of good or service in excess of three. In certain cases, the complementary fee is replaced by an individual fee. The fee structure can be checked under the Madrid system for more clarity. Check Here to more about : https://ipindia.gov.in/trade-marks.htm

Merits of the Madrid Protocol:

  •   The Madrid Protocol is both cost and time-saving, thus preventing the multiplicity of applications
  •   It has established uniformity and has made a centralized system for trademark registration possible across various nations
  •   The applications can be made in any language like English, Spanish or French, which acts as an advantage to India as it can file the applications in English in several non-English speaking jurisdictions like the European countries
  •   In case any details are required to be changed with respect to the holder of rights, a single document pertaining to the same can be sent to the International Bureau, without having to send one to every member nation
  •   The fee required in applying through the Madrid protocol is much more economical when considered over a period of time, than the fee being paid for individual registrations across the countries.

The Madrid protocol, therefore, acts as a shortcut to obtaining an international trademark registration while employing cost-effective methods. The Madrid protocol has encouraged several businesses to expand their ventures across foreign countries. Although the procedure would still take time to get the registration accomplished, our trademark experts here at Vakilsearch can handhold you and guide you through the process seamlessly. Our experts have an eye for detail, and would be able to handle the trademark registration impeccably through the Madrid protocol in the most effective way.

Also,ReadMore:


Subscribe to our newsletter blogs

Back to top button

Adblocker

Remove Adblocker Extension