Comparative Analysis: Madrid Protocol vs. Direct National Filing in India

Introduction

Trademarks are the identifiers that enable businesses to establish a strong footing in the global marketplace. Although there are many well-known marks in the industry, registering marks is a vital process for businesses to safeguard their brand identity and intellectual property and to obtain exclusive rights over them. Trademark law underwent substantial changes, both multilaterally and regionally. The Paris Convention established the beginning of the international trademark system, and the Paris Union was expanded by a distinct union which is collectively known as the Madrid system.

The Madrid System is composed of the Madrid Agreement and Madrid Protocol. The former was enacted in 1892 to establish a standardized system for the international filing and registration of trademarks. Since its inception, the Madrid Agreement has undergone several amendments. Nevertheless, there were still certain issues that needed to be addressed and in response to it, in 1996 Madrid Protocol was established which functions as an amendment to the Madrid Agreement for its Members and as an independent international agreement for nations that have not accepted the Madrid Agreement. Hence, to utilize the Madrid protocol, the trademark owner’s country of origin must be a member of the Madrid protocol, and the nation where protection is sought must also be a member. The utilization of the Madrid Agreement necessitates adherence to comparable membership regulations.

Benefits of Madrid Protocol

1. A single application can be filled in 90+ countries to safeguard the mark
2. Allows filing in one language (English, Spanish, and French) with one set of documents.
3. Allows payment of one set of fees.
4. Automatic registration will occur in designated countries if the trademark office does not raise any objections during a period of 12 and 18 months.
5. Applicant/ownership information, product and service limitations, registration renewal, and assignment/license of rights in several countries can all be modified by submitting a single application.

Comparative Analysis of Registration Process in India and Madrid Protocol

India became a member of the Madrid Protocol in the year 2013, and any individual wishing to register a trademark internationally must follow the protocol’s requirements. The following is a comparison between direct filing in India and filing through the Madrid Protocol, which will provide an insight into which can be more beneficiary. 

1. Registration Process – The Madrid protocol allows applicants to apply for international registration by having a registered trademark or existing application at their home country’s office, also known as the office of origin. Subsequently, the applicant can apply with the International Bureau (IB), providing the necessary details as per their application in India. The applicant can then choose from 92 countries that are part of the protocol and file their application in each office through a single application at one time. However, this benefit is not available when filing directly in India. Trademarks have jurisdictional limitations, with each nation having its own set of laws. In India, trademark registration involves a trademark search, filing an application with detailed information about the applicant, prior use, class, description of goods and services, and the type of mark to be registered. The application then undergoes examination, publication, and potential opposition before the mark is finally registered. Hence, this process can hinder the applicant’s chances because of the continuous delays and backlogs faced due to the opposition and objections arising during the Trademark Registry.
2. Examination Process – The Madrid Protocol involves a two-stage examination process for trademark applications. First, the Office of Origin sends the application to WIPO, which checks if it follows the protocol’s rules. WIPO then approves and publishes the mark in the International Register and Gazette of International Marks. Afterward, they notify the designated member countries, which then examine the application according to their national laws. In contrast, when applying directly in India, the application goes through a single examination process to ensure compliance with both substantive laws and procedural requirements. During the substantive examination, the examiner assesses whether the trademark applied for registration can be refused for registration based on an absolute and relative ground of refusal, by ensuring the following:

1. It is ensured that the mark is non-generic, non-descriptive, or non-suggestive.
2. Does the mark possess sufficient distinctiveness to differentiate goods and services from previously registered marks?
3. It is ensured that marks do not indicate the kind, quantity, quality, time, or geographical source of goods and services.
4. It is ensured that the mark for which registration is sought has not become common in established trade practice.
5. It is ensured that the mark does not deceive the public or create confusion for consumers.
6. It is ensured that the mark does not hurt the religious sentiments of any community or class of section and does not include any obscene content.
7. It is ensured that the use of such marks is not prohibited under the Emblem & Names (Prevention of Improper Use) Act, 1950.
8. It is ensured that the mark is distinctive and not associated with a well-known or registered mark.

During the procedural examination, the examiner checks the following:

1. The form is filled out within the TM-A document.
2. The name of the applicant and the principal place of business are properly mentioned.
3. The appropriate class or classes are mentioned in the application.
4. The applicant’s signature, date, and place of filing are included.
5. If the application is filed online, a duplicate logo is included.
6. If the mark is already in use, an affidavit demonstrating ongoing use of the trademark is submitted.
7. If the application is for a collective mark or certification mark, draft regulations are submitted.
8.  For priority claims, adequate priority documents are submitted.
9. An MSME certificate, if applicable, is included for special fee concessions.

3. Time Frame for Trademark application process – Under the Madrid Protocol, the approval of registration typically takes between 12 and 18 months after the application is submitted to designated nations. If a designated country fails to notify the applicant about the registration within the stipulated time limit, the registration is automatically granted. In India, it takes up to 10 to 12 months for the approval of registration from the date of filing the final registration.

4. Fee schedule – In Madrid protocol three types of fees are to be paid –

1. Basic fee – This fee is paid for filing of an application where if the mark is black and white then it costs 653 Swiss francs and if the mark is in colour, then 903 Swiss francs is to be paid.
2. Complementary fee – A fee of 100 Swiss francs is to be paid for each Contracting Party designated in the application.
3. Supplementary fee – If the application covers more than three classes of goods and services, then a supplementary fee for each additional class is to be paid.

If directly filling in India, then the fee structure is as follows-

a. Basic Fee – It is paid for each class of goods and services as follows

1. For Company, Trust, and Partnership –
2. INR 9000 – E-filling
3. INR 10,000 – Physical filling
4. For individuals, startups, and small enterprises –
5. INR 4500 – E-filing
6. INR 5000 – Physical Filling

b. If an individual wants to include their mark in the list of well-known marks, then Rs. 1,00,00 is to be paid through e-filing.

5. Language – In the Madrid Protocol, the applicant has the option to submit an application either in English, French, or Spanish. However, if applying directly in India, the application can be submitted in either English or Hindi.

6. Dependency Period of 5 years – In the Madrid system, when an application is filed, it remains dependent on the initial application at the original office for a period of five years. This means that if there is any objection or cancellation of the mark at the origin office, all other designations connected to that trademark will lose their protection. This situation is referred to as a ‘Central Attack,’ where actions at the origin office impact the entire Madrid application and its designations. For instance, if an Indian applicant, A, submits an application under the Madrid Agreement or Protocol for international trademark registration based on their initial filing in India, and specifies four designated countries for trademark registration, any objection to the mark in India within five years can lead to the cancellation of protection in all designated countries. However, the Madrid Protocol offers a way to mitigate the effects of a ‘Central Attack.’ It allows the applicant to convert the international registration into a national application within three months while retaining the original filing date of the international application. In contrast, if an application is filed directly in India, the applicant does not face the five-year dependency period.

Conclusion

The Madrid Protocol offers significant advantages for trademark registration, including streamlined processes, cost efficiencies, and broader geographical protection through a single application. Its ability to facilitate filing in multiple languages and the convenience of a unified fee structure are notable benefits compared to direct national filing in India, which involves more complex and time-consuming procedures. However, the Madrid Protocol’s dependency period of 5 years poses a potential risk that is not present in direct filings in India, but the same can be mitigated within three months of cancellation of the mark in the home country. For businesses seeking expansive international trademark protection with streamlined management, the Madrid Protocol is highly advantageous. Conversely, for those focusing solely on the Indian market, direct filing may be more suitable due to its simplicity and lack of dependency on international filings.

Written by Nikita Verma, Intern @Intepat