Understanding The Madrid Protocol
The Madrid Protocol is an international agreement that enables individuals or businesses to obtain trademark protection in multiple countries through a centralized system. The Madrid Union consists of 100 member states and intergovernmental organizations, covering territories in various countries. The Madrid Protocol allows a brand to protect itself on an international level and gives a user-friendly, cost- effective and expeditious set of procedures in a single application.
Not all states are contracting parties under the Madrid Protocol, such as Hong Kong, Afghanistan, Bangladesh, Nepal, Pakistan, etc. Therefore, in countries such as these which are non-contracting parties. the applicant would be required to file separate applications in order to garner protection for their mark.
The process of international registration of a trademark consists of three easy steps:
- Single filing procedure to seek protection in various territories
Earlier, an international registration had to be registered in the home country as well as physically in the trademark offices of all the countries where the protection was sought, . Now, after the adoption of the Madrid Protocol by many countries, the lengthy task of filing has been reduced and only a single application is to be filed to register a trademark.
According to the Indian Trade Marks Act, 1999, an international application can be filed digitally at http://www.ipindia.gov.in/trade-marks.htm or in the applicant’s home country physically. Thereafter an international trademark application can be filed at the IP India website, demarcating the member countries where the applicant seeks protection. Under the Madrid Protocol, an application can only be filed in English, French & Spanish.
- Notification to the designated countries
World Intellectual Property Organization (WIPO), a global forum for IP services, policy,and information reaches out to the members of the Madrid Union regarding the application of international registration, and a time constraint of 18 months is to be adhered to by the member states to raise their objections with concerning for to the application of registration of a trademark
- Registration of Trademark
In the absence of any objection within 18 months from the date of the international registration, the application will be considered to be registered by default. After successful registration, the trademark is considered to be granted and protected in the member states. Additionally, it can be renewed every 10 years in an extension of the protection for the trademark
Benefits Of The Madrid Protocol
- Easy Filing Of Trademarks In Multiple Countries
The Madrid Protocol was formed to reduce the formalities of registration in all the countries where the applicant seeks to protect their trademark. It establishes an agreement where only a single application plus a prescribed fee is needed to get protection in the designated member states. Thus, the Madrid Protocol established the filing of trademarks via one application, one attorney/lawyer, or representation eliminating the tedious tasks of filing protection in each member country. This helps the brand owner to protect his mark in multiple jurisdictions without the need for extensive procedure.
- Cost-Effective And Convenient To File Trademarks
Madrid Protocol is formed in a way that eases the burden of multiple filing as mentioned above and paves the way for the efficient way of filing once and lack of multiple filing also leads to cutting down the expenditure of the applicant and hence this plays as one of the major factors for an applicant to opt for Madrid Protocol.
- No Language Constraints
Under the Madrid Protocol, an applicant can opt for any of the three official languages used such as English, French, or Spanish. All three languages are widely spoken and accepted and hence provide flexibility to opt for the language among the member states as per the comfort of the applicant.
- No Hiring Of Multiple Local Agents
With the help of a single filing system, the task to hire local agents in each country where the protection is to be sought is reduced. Under the system, one agent in the home country is enough for registration.
- Beneficial To The National Economy
Since the Madrid system regularizes the filing procedure of the trademark, it is easier for the contracting parties to protect their trademark. This has economic benefits as well, where the export of goods takes place between designated member states that the parties want protection in. Accordingly, the Madrid system is seen to be beneficial to the government and the national economy as it becomes one of the factors to bring in revenue in the form of the export of goods. The economic benefits further become apparent as discussed below in the Honda Report example.
- Post-Registration Procedures Are Simple, Centralised, And Cost-Efficient
Prior to the Madrid Protocol, in case of any error after the registration, the cost and efficiency of altering the application had to be done all over again by going through each country’s registration compliances. However, after the Madrid Protocol, the procedure to alter those changes has been unified in the form of a single application only with a submission of a one time fee. This makes the job of the applicant extremely easy and not time-consuming.
- Speedy Procedure
It is observed that countries that have adopted the Madrid protocol go through a fast -track process i.e- high priority approval to their trademarks is given in comparison to the countries that have not adopted the Madrid protocol.
The Madrid Protocol Case Study [Honda Motor Co., Ltd.]
The benefits of the Madrid Protocol can be evidenced through a report by Toshiyuki Matsudaira pertaining to the example of Honda Motors Co., (Honda Report). According to the report, the unit of sales of the Honda brand in 2010 in the target market was considerably lesser despite efforts to improve and improvise their brand strategy. The duplicate brands/dummy brands kept forging the market of the original Honda Motors Co. Ltd., to eliminate this threat.
In order to tackle this problem, the Madrid System was used as a new strategy within the company. The Honda Report observes various benefits of the Madrid Protocol such as single application in the contracting parties, automatic protection, easy extension, single expiry date, and cost-effective administration. The report further observes the difference in filing the international registration of trademark before and after the use of the Madrid Protocol, how the cost effectiveness or efficiency of filing a trademark through a Madrid Protocol increased rapidly.
The benefits of the system are also visible as the number of companies using the Madrid Protocols has also increased from 2006 to 2010 tremendously, paving the way for the expansion of the market as well as globalization. Entering into the Madrid Protocol automatically helps member states like China, where it was observed in the Trade Mark Strategy – Annual Development Report 2010, that the amount of Madrid system applications increased from 20,000 applications to more than 100,000 applications since 1993.
India’s Perspective On The Madrid Protocol
Some amendments were introduced in the Indian trademark laws to meet the requirements under the Madrid System after India became a member. On September 21, 2010, the Trademark (Amendment) Act, 2010, was introduced to bring into action the system of the Madrid Protocol in India. The modification in the Trade Marks Act, 1999 led to the addition of Chapter IVA containing Section 36A to Section 36G.
Accordingly, Section 36C stipulated that an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify. Sec 36D provides for regulations relating to the international registration trademark originating from India. An applicant can make an international application on the form prescribed by the Common Regulations for international registration of that trade mark if an application for the registration of a trade mark has been made under section 18 or a trade mark has been registered under section 23. Sec 36F states that the protection that is extended by the international bureau to the Indian trademark is the same as if the trademark had been registered in India.
This chapter focused on the special provisions concerning trademark protection under the Madrid Protocol in India. The Madrid Protocol ensures stability and uniqueness in a highly competitive domestic as well as international market. The benefits of the Madrid Protocol ensure that it is efficient, cost-effective, and compliant for every brand owner to access.
Requirements to be fulfilled in India while filing an application under the Madrid Protocol are that the applicant must be an Indian resident, an existing trademark application should be available with the applicant, the applicant should be entitled and eligible to file for an international registration, the applicant should identify more than one country where the protection sought for is needed in the application and there should be a business place in India.
CONCLUSION
In its entirety, the Madrid Protocol provides a very user-friendly, cost-effective,and compliant interface that helps brand owners protect and ensure their brand from any possible threats. The wide acceptance of this protocol by member states as well as market players has proven to be very effective time and again. Right now, the international registration of a trademark can only apply to countries that are part of the protocol. However, one possible solution to protect trademarks in non-member countries is to create a memorandum of understanding. This would expand the scope of protection for the trademark and give brand owners more stability and protection.
Author: Aditi Sharma
