Madrid Protocol in India
Two treaties govern the system of international registration of marks: The Madrid Agreement Concerning the International Registration of Marks (from now on referred to as “Madrid Agreement”), which was adopted in 1891, and the Madrid Protocol (from now on referred to as “Madrid Protocol”), which was adopted in 1989, came into effect on December 1, 1995, and went into effect on April 1, 1996.
In the year 2013, India entered in the Madrid Protocol. The World Intellectual Property Organization administers the Madrid Protocol (WIPO). The System was introduced to make the process of filing International Registration of Trademarks applications across multiple jurisdictions easier. Each region in India has its system for trademark registration.
What is Madrid Protocol?
Anyone who wishes to protect his trademark must register it in the country where he wishes to protect it. On the other hand, a trademark granted by a specific country protects the proprietor’s interest only in that country.
Furthermore, anyone seeking international trademark protection was required to file for trademark registration in each country where such protection was sought. This caused a lot of confusion, such as the multiplicity of applications, inconvenience to the potential applicant, and increased costs. The Madrid system provided a one-stop solution for all such issues.
The Madrid system enables the registration of trademarks in multiple jurisdictions worldwide that are part of Madrid Union’s member countries by filing a single application in the Applicant’s national or regional trademark office. India was not a member of the Madrid system earlier. But soon, it realized its advantages and decided to become one of its signatories. India joined the Madrid Protocol with effect from July 8, 2013. Applications using the Madrid system can now be filed from India.
When India became a member of the Madrid Protocol, certain amendments had to be made to the Indian Trademarks Law to comply with the Madrid system. The Trade Marks (Amendment) Act, 2010, was passed on 21st September 2010 to bring into force the Madrid Protocol in India. The amendment included Chapter IVA (containing sections 36A to 36G) in the Trademarks Act 1999.
Filing of International Trademark Application:
Individuals or companies are prepared to submit an international application once they have chosen the trademark for international protection. But first, we must ensure that a few prerequisite conditions are met. The Trade Marks Registry, under the office of the Controller General of Patents Designs and Trade Marks (CGPDTM), deals with international applications originating from India.
Basic Requirements:
One can file an international trademark application under the Madrid system if: (i) The person is a national of India, or a natural person or legal entity domiciled in India, or a real and effective industrial or commercial establishment in India, and (ii) The person should have a “basic mark” in India, which means that the mark has already been registered or applied for protection in India at the India Trade Marks Registry.
Online e-filing at the IP India website:
One must electronically submit an international application under the Madrid Protocol at the IP India website by filling out a specific form[MM2(E)] available at IAOI that is (International application originating from India).
Detailed Information for the International Application:
The international application form (MM2) must include the following information:
(i)The international application form (MM2) must include the following information: your name and address;
(ii) a copy of your mark that must be a replica of your basic mark in India;
(iii) a list of the goods and services for which protection is sought that must be entirely covered by those listed in your basic mark; and
(iv) a list of members of the Madrid Union in which protection for the mark is sought (designated Contracting Parties).
The requirements below are mandatory and impact the date of the international application. The international application must also contain the following:
-an indication of your entitlement to file (establishment or domicile in India or Indian nationality);
-trademark priority claim, if applicable;
-name and address of the representative, if appointed;
-number and date of your basic mark at the India Trade Marks Registry;
-indications of the mark (kind of mark, color claim if applicable);
-description of the mark, if required;
-transliteration of the mark, if applicable;
-the amount of the fees being paid and the method of payment.
List of Goods and Services:
One should accurately identify the goods and services for which trademark protection is sought when submitting a trademark application (national or international). These goods and services must be correctly classified following the International Classification of Goods and Services for the Registration of Marks (Nice Classification).
Designating the areas where protection will be provided
One should list all the Madrid Union members (Madrid Protocol Contracting Parties) where they want their trademark protected in the international application. One can designate any Madrid Union member except India by simply checking the box next to each member’s name in the application form (MM2). The trademark in India (basic mark) will continue to be protected under Indian law as registered by the India Trade Marks Registry.
Madrid Protocol Trademark Registration Process and Stages:
Indian business owners and organizations are now quickly securing international registrations to expand their business to various or all nations covered by the Madrid Protocol. By submitting a single application to any of the relevant Trademark Offices in India, the International Registration may be secured.
Basic application:
To apply for the Madrid Protocol in India, you must first have a pending application or a registration with the Indian Trademark Office. The Indian Trademark Office will then confirm that the information in the international application—including the mark, goods & services, color claim, etc.—is identical to the data in the basic application or registration, verify the date on which the international application was filed, and send the application to WIPO.
Examination by WIPO:
WIPO undertakes a formal review of the application following the submission of the international application to see whether it satisfies legal requirements. If there are any anomalies, the applicant is advised of them and given three months to fix them; otherwise, the application will be deemed abandoned.
Publication by WIPO:
Following examination, the application is entered into the international register and made public in the WIPO Gazette of International Marks if no irregularities are discovered or if they have been corrected within the prescribed time frame. The applicant will subsequently get a certificate of international registration from WIPO. Further, WIPO will also inform the other trademark offices in the nations where the applicant has decided to broaden the scope of the mark’s protection.
Subsequent Examination by the Trade Mark Office of the Designated Country:
The application undergoes substantial examination in the same manner as a directly filed national application at the trademark office of the designating country. Within the required time frame, the designated nation notifies WIPO of its decision to accept or reject the application (12 or 18 months). The WIPO will then note this in their files and inform the applicant of the trademark office of the designating country’s decision.
The Indian Trade Marks Office has 18 months from receiving notice of an international application designating India until it must issue an examination report (provisional refusal). Suppose the Indian Trade Marks Office notifies WIPO of a provisional refusal. In that case, WIPO will assess the notification and inform the applicant, who has one month from the date of receipt of the notification, to submit a formal response.
Advertisement and Registration:
Post-filing the response to the provisional refusal, the Indian Trade Marks Office will review the same in a couple of months. The mark will subsequently be advertised in the Indian Trade Marks Journal and open to third-party opposition for four months. On the expiry of the 4-month opposition period and in the absence of any trademark opposition, the mark shall be granted protection by the Indian Trade Marks Registry, and the registration will be valid for ten years.
Renewal:
Renewal application concerning the Madrid application designating India needs to be made only at WIPO, and the same shall be notified to the Indian Trademark Office by WIPO.
Advantages:
1) It has a centralized trademark application process by which a person can get protection worldwide through a single application and a single set of fees.
2) It is a more convenient and cost-effective method.
3) It prevents the multiplicity of applications.
4) The Protocol Applications may be in French, English, or Spanish (which is an advantage in non-French speaking jurisdictions like India.
5) The process is less time-consuming.
6) Any change in the details of the right holder (Eg. name, address, etc.) can be changed by sending one single document to the International Bureau, and no efforts have to be made at every national office.
7) Under the Madrid Protocol, it is pretty easy to add and subsequently designate the member countries later under the same International registration. The filing and maintenance fees associated with international registration are lower over time than maintaining several separate national registrations.
Though there are a lot of advantages to the Madrid protocol in India, it also has a few disadvantages. The following are some of them.
Disadvantages:
i) The international application is dependent on the essential application/registration; thus, if there is any change in the “basic” application or registration (like cancellation), these changes shall automatically apply to the international applications as well.
ii) Assigning the ownership of an International registration to entities residing or having a connection with the Non-Madrid Protocol state is prohibited under the rules of the Madrid Protocol. This is not good for India because it has business interests with several non-member countries. Therefore, it will have to file national applications to deal with these countries.
iii) If an Indian basic mark is canceled or limited in the first five years, then the International mark will similarly be canceled or limited. After the expiry of this five-year term, however, international registration becomes independent.
To conclude, Madrid Protocol provides a convenient and cost-effective way of obtaining trademark protection. However, effective utilization of this system in India will require more extraordinary administration and timely management of trademark applications owing to its stringent timelines.
