A person to protect his trademark had to get his mark registered in the country where he wants to protect it. But a trademark granted by a particular country served to protect the interest of the proprietor only in that country and any person who wanted to protect his trademark internationally was thus required to file for trademark registration in each individual country where such protection was sought. This created a lot of chaos like the multiplicity of applications and inconvenience to the potential applicant in tracking each application and also increased the costs for the applicants. The Madrid system was a one-stop solution for all such problems.
As of 01 st August’ 2020, 106 countries have joined the Madrid Protocol. These countries are known as Contracting Parties. Registration of trademarks internationally is governed by 2 independent treaties, namely Madrid Agreement and the Madrid Protocol. These 2 together are known as the Madrid System for the International Registration of Marks, which is administered by the World Intellectual Property Organization located in Geneva, Switzerland.
It provides the trademark holder with following benefits-
- One application;
- in one place;
- with one set of documents;
- in one language;
- with one fee;
- resulting in one registration;
- with one number;
- and one renewal date;
- covering more than one country.
Therefore, the Madrid Protocol is a cost effective and efficient means for trademark owners, both individuals and businesses to protect their mark in a variety of countries by filing one trademark application with the IB of the WIPO.
MADRID PROTOCOL IN INDIA-
India became the member of Madrid Protocol with effect from July 8’ 2013. The trademark applications can now be filed from India using the Madrid system. The adoption of the Madrid Protocol has eased the process of applying for trademark protection on international grounds. It provides for a simplified process whereby Indian nationals can apply for brand protection on international grounds and vice versa.
PROCEDURE FOR FILING APPLICATION UNDER MADRID PROTOCOL-
- The applicant desiring to file an application for international registration of trademark under the Madrid Protocol through India, must be able to meet one of the following three criteria-
• The applicant should be a national of India, or
• The applicant should be domiciled in India, or
• The applicant should have a real and effective business in India.
Basic Application/registration mentioned in International Application subsists in the TMR records, and it does not have status like withdrawn, abandoned, refused, removed or cancelled.
The nature of the trademark mentioned in the international application is same as that in the basic application or basic registration.
STEP 1- BASIC APPLICATION:
The foremost requisite is that the application is to be filed from the place of origin or the principal place of business of the applicant. Further, the applicant must have a national trade mark application or registration of a trademark with the Indian Trade Marks Registry. This national mark must be used as the basis of the international application. The international application will have the same trademark as mentioned in the national trade mark application or registration; and the list of goods and services mentioned in the international application should be identical with the basic mark. The applicant must specify one or more member states of Madrid Protocol in which the applicant wants to protect his mark.
The international application under Madrid Protocol is filed online by filing a Special Form [MM2(E)] available at IAOI (International application originating from India) on the IP India Website. Once the application is submitted to the Trade Mark Registry, the Registry reviews and certifies the application and transmits the same to WIPO. The fee for international application and the individual fee/Complementary fee for designated countries wherever applicable is to be paid directly to the International Bureau of the WIPO, in Swiss Francs.
STEP 2- EXAMINATION BY WIPO:
The International Bureau of the WIPO scrutinizes International applications received from offices of origin to ensure that the application complies with the statutory requirements. If any irregularity is found, the IB notifies such irregularities to the office of origin concerned as well as to the applicant’s authorized representative.
The designated officer of the TMR will generate a letter through the system and send it, by electronic means, to the person who has made the International application requiring the applicant to rectify the irregularities within the period of one month from the date of such communication. Any such irregularity shall be rectified within a period of three months from the date of notification or otherwise the application shall stand as abandoned. However, in case of no such irregularity the application is proceeded for publication.
STEP 3- PUBLICATION BY WIPO
Post examination, if no irregularities are found or if any such irregularity has been remedied within the statutory deadline, the application is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send the applicant a certificate of International Registration and will notify the other trademark offices in the countries that the applicant has chosen to extend the protection of the mark.
The scope of protection of the mark is not known at this stage and will depend upon the outcome of the substantive examination conducted by offices of the members designated.
STEP 4- SUBSEQUENT EXAMINATION BY THE TRADE MARK OFFICE OF THE DESIGNATED COUNTRY
After WIPO has recorded the mark in the International Register and Official Gazette, it will notify all the offices of the members that you have designated in the international application so that these Offices can begin their substantive examination. At this stage, the application passes through substantial examination at the trademark office of the designating country exactly the same way as a directly filed national application is examined.
The application is reviewed as per the national law of that particular country. The acceptance or refusal of the application by the designating country is notified to WIPO within the applicable time limit of around 12 months to 18 months from the date of such notification.
The notification includes reasons for refusal, any further steps that are required, review, appeal options and such other loopholes in the application. The time limit provided to respond to such refusal is mentioned in the notification and the same depends upon the law of that particular country where the applicant is seeking protection of his mark.
STEP 5- ACCEPTANCE OF THE APPLICATION:
If no such objection/ irregularity is established or any such objection has been waived off, the application is accepted and the Designated Contracting Party will grant protection to the trademark as a mark registered with their office. This protection is granted for a period of ten years after which it has to be renewed. Only one renewal fee is required because one international registration number exists.