What is the Madrid Protocol?
A registered trademark can be a precious asset for any business as with a trademark, the business can project its unique positioning to the consumers. But, a trademark registered in a particular country can protect the interests of the concerned proprietor in that country only. If the proprietor wanted to protect his trademark internationally, he needed to register his trademark earlier in every country where he wanted such protections. This caused inconvenience as the multiplicity of applications and the cost involved got increased by manifolds. The Madrid System was introduced as a ‘single-window solution’ to all such problems.
The Madrid System functions under the Madrid Protocol (1989) and the Madrid Agreement (1891). It is regulated by the Geneva-based organization WIPO (International Bureau of the World Intellectual Property Organization). The Madrid Protocol allows registration of trademarks in multiple countries (that are members of the Madrid Union) by filing a single application. India became a member of the Madrid Protocol from 8th July 2013, which made filing of such applications possible from India as well.
After India became a Madrid Protocol Member, the need was felt to amend some of the provisions of the Indian Trademark law to ensure compliance with the Madrid Protocol Trademark. Accordingly, Chapter IV (A) was included in the Trademark Act of 1999. This chapter mentions the special provisions related to ‘what is Madrid protocol Trademark’ and protection of trademarks through registering internationally under the Madrid Protocol.
why is the Madrid Protocol significant? (Benefits)
The significance of Madrid Trademark Search and the benefits associated with Madrid Protocol Trademark registration are mentioned below-
- With the centralized application process of the Madrid Protocol Trademark, the applicant can get worldwide protection by submitting one single application, along with a single set of fees.
- It has prevented multiplicity of applications and, subsequently, has simplified the management of such applications
- Applicants can now get “international trademark registration” in India based on a ‘basic registration’ or ‘basic application’ in a member country.
- The applications can be made in English, French or Spanish - which is a definite advantage for non-French speaking Madrid Protocol Member jurisdictions such as India.
- The process is less costly and consumes less time, as compared to the traditional way of trademark registration. The fees for filing and maintenance with the Madrid Protocol Trademark registration are much lower than maintaining individually with multiple national registrations.
- In case of any changes to be made in the details of the trademark holder, it is sufficient to send one single document to the WIPO. No need to send any separate application to individual offices of the Madrid Protocol Member countries.
- It is quite easy to add and subsequently designate a Madrid Protocol Member country under a single international registration.
How to file a trademark application under the Madrid Protocol?
In India, a trademark application can be filed under the provisions of the Madrid Protocol when India is the origin or the designated country. In case India is the origin country, applications for international trademark registration can be filed with the Indian Trademarks Registry (TMR). If India is chosen as the designated country, applications for international trademark registration are filed with the WIPO.
The step-by-step procedure to file a trademark under the Madrid protocol is mentioned below-
When India is the origin country ( “Office of the origin”)
Eligibility criteria for receiving international applications:
- The applicant must be an Indian citizen or should be having a place of business/commercial establishment in India
- The applicant must have a trademark registered with the Indian Trademarks Registry (TMR).
- The international application must mention the same trademark and the list of goods & services as mentioned in the national trademark application.
The procedure for filing international application:-
- The applicant files the basic application/ registration for the "Basic Mark", along with accompanying forms & documents ( for details, refer to the next section)
- The applicant pays the handling fee of Rs 2000
- On successful receipt of the Madrid Protocol Trademark registration application, an acknowledgment is generated mentioning the IAOI (International Application Originating from India) number. This number should be kept for future correspondence
- The designated officer of the Trademarks Registry will verify the international application with the data available in TMR records.
- In case of any deficiency/irregularity, communication will be sent to the applicant. He should rectify the deficiency/irregularity within 1 month.
- On being satisfied, the officer will move the application for certification.
- After certification, the application will be transmitted to the IB (International Bureau) of the WIPO
- The applicant is duly informed by the TMR officer about the transmission to WIPO and the fee to be paid directly to the WIPO.
When India is the designated country ( “Office of Designated Contracting Party”)
- The applicant files the international trademark application designating India, with the WIPO
- The Bureau scrutinizes such a Madrid Protocol Trademark registration application for necessary compliance to the Protocol and other regulations
- On being satisfied, the mark is recorded in the International Register. Also, the Bureau publishes the registration in the WIPO Gazette of International Marks and informs each of the designated contracting parties (including India).
- Upon receipt of the information, the details of the international registration will be verified by a competent TMR officer, as per provisions mentioned in the Trade Marks Act of 1999 and Trade Marks Rules, 2002.
- In case of any objection, a provisional refusal will be notified to the International Bureau (WIPO), within 18 months of the notification to India.
- The IB records the refusal and communicates the same to the applicant.
- The applicant files the response to the IB, which is then communicated to the TMR
- After considering the response, the TMR may either confirm the refusal or may move for publishing the registration in the Trademarks Journal.
- The fee for the International Application and that for designated contracting parties should be paid by the applicant in Swiss Francs directly to WIPO
For more details, you can download the Madrid protocol pdf from here.
What are the documents required for filing a registration application under Madrid Protocol?
The following documents need to accompany an application for filing international registration for Madrid Protocol Trademark -
- The application must be submitted on form MM 2(E)
- If filed through an attorney or a registered trademark agent, a power of attorney on form TM-48, in favor of the agent or attorney, must accompany the international application
- If the USA is the designated country, the applicant must attach the form MM18 (E), along with the application
- If the European Union is designated, the applicant should indicate a second language in the application, out of German, French, Spanish & Italian. Also, if the applicant wants to claim seniority over a mark registered earlier in a member state of the Union, he needs to attach the form MM17 (E) along with his application.
- The trademark mentioned in the application must be scanned legibly and attached along with the application (in prescribed size and format).
- If the trademark consists of plain text (words/numerals/letters/their combinations) and without any figurative element, the applicant must declare that the mark is made of standard characters. The textual element of the mark should be mentioned in the appropriate field.
- The applicant must have a level 3 Digital Signature Certificate, issued by a competent authority designated by the Intellectual Property Office of India.
Frequently Asked Questions
No. An international registration remains valid for 10 years from the date of registration. It needs to be renewed, before the expiry, by paying the required renewal fee.
Also, an international registration depends on the mark applied for/registered in the ‘Office of origin’ for 5 years from the date of registration. If the basic registration becomes ineffective within this period, the international registration becomes invalid.
A ‘Basic Application’ means an application for the registration of a trademark pending before the Trademark Registrar (TMR) which is used as a basis for applying for an international registration
A ‘Basic Registration’ means the registration of a trademark before the Trademark Registrar (TMR) which is used as a basis for applying for an international registration
IRDI stands for ‘International Registration Designating India’. It is a unique number allotted by the Indian Trade Marks Registry to every International Registration in which India has been designated.
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