This article is written by Shruti Tendulkar, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from lawsikho.com.
Table of Contents
Introduction
A consumer generally buys certain products presuming it to have originated from a specific brand but there is a possibility of him being duped. If such a consumer buys a certain product considering it to be associated with a specific brand when it is not, then in the process the reputation of the standard trader/brand suffers. To protect his reputation and to refrain other local brands from violating and carrying out their business under the earned goodwill of such standard trader/brand, and also to save the interest of the consumer, there needs to exist a definite symbol which marks out the origin of the goods and services of such standard traders. Such a symbol of distinction is called a trademark. It is a sign, symbol, logo, etc. which is capable of distinguishing the goods or services of one brand from those of others. These trademarks are protected under intellectual property rights. In India, the trademark is registered under the Trademark Act, 1999.
Similarly, to simplify the international trademark registration process the Madrid Protocol is designed. As a brand owner or a trader one is likely to consider international trademark registration. Though this process seems overwhelming but with the Madrid Protocol, it becomes much easier. This system functions under the Madrid Agreement and the Madrid Protocol. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) which is located in Geneva, Switzerland.
Madrid protocol
Initially if a trader or a brand owner wanted to register his trademark then he had to get it registered in the country where he wanted to protect it and such protection granted by a particular country, protected the interest of the proprietor only in that specific country. Hence, if any trader/ brand owner who were interested to protect his trademark internationally was required to file a separate registration application for trademark in each country where he wanted such protection. This laid to a chaotic situation as there were multiple applications and hence it was highly inconvenient and costly for the applicants. Madrid protocol acted like a savior in such a chaotic situation. It helps and simplifies the registration of trademarks in multiple countries globally which are member counties of this system by simply filing a single application in the applicant’s national or regional trademark office. India decided to become one of its signatories and joined Madrid Protocol and is part of the system since 8th July, 2013. Today 90 countries are part of the Madrid system, and India is one of these countries.
After joining the Madrid protocol there have been certain amendments brought within the Trademark Act, 1999. The 2010 amendment led to the insertion of Chapter IVA (containing sections 36A to 36G) which talks about “Special Provisions concerning to Protection of Trademarks through international registration under the Madrid Protocol.” It mentions about Effects of international registration, duration, and renewal of international registration, etc. thanks to these changes now it’s easy for the applicants to designate India and obtain international registration in India based on a basic registration in a Protocol member country.
Advantages of the Madrid system to the trademark office
Madrid protocol has simplified the international registration process and it has become easier for the applicants to hunt international protection for them in a cost and time-effective way. International registration is of the advantage of the trademark offices also. Due to this system, the offices do not need to examine formal requirements, or to classify the goods or services, or publish the marks, etc. such formalities will be already performed by the International Bureau. Following are other advantages of the Madrid protocol:
- It is cost-effective: Earlier the applicant had to file country-by-country registration which was time-consuming and costly since both governmental and legal expenses for filing such international application on an individual level were expensive. However, the standardized form requirement and fee structure of the Madrid protocol has helped to curb down international registration fees by 60%. This system saves time and money by filing one application, rather than a bundle of national applications.
- Convenient: This system has made the international registration process simple and convenient for the applicants. One can easily file just a single application in one language and needs to pay one set of fees to apply for trademark protection in several nations.
- Centralization: Madrid Protocol is a centralized process. A person can get protection for his trademark throughout the world by filing a single application. This application allows a trademark owner to target the countries in which one seeks protection for one’s trademark.
- It prevents the multiplicity of applications: The chaotic situation which existed due to the filing of multiple applications is avoided due to the Madrid Protocol. It has simplified the filing process for an international trademark.
- Changes can be made easily: If any change in the details of the proprietor of the trademark is required to be made (Example- name, address, etc.) then it can be changed by sending one single document to the International Bureau and no efforts have to be made at every national office.
India as a part of the Madrid Protocol
India became part of Madrid Protocol w.e.f. 8th July, 2013. Now application for international trademark registration can be easily filed using Madrid Protocol from India. As mentioned above, after pursuing this protocol, certain amendments were made to its intellectual property regime to align it with the global norms. This amendment was made through the Trademark (Amendment) Bill, 2009.
This amendment led to the insertion of a new chapter i.e. chapter IV A which deals with the statutory and procedural requirement for international registration of Trademarks. The amendment added sections 36A to 36G in the trademark act, 1999. These sections entail the provisions related to the international registration under the Madrid Protocol. As per these provisions, on receipt of notification from international bureau, the national registry will examine the mark under the provisions of trademark act, 1999 and further accordingly issue necessary steps i.e. either accept or refuse the application and further appraise the international bureau within 18 months from the date on which it received the notification concerning the same.
There are certain guidelines that need to be adhered to by the applicants while filing such international application for trademark registration with the trademark registry and it also lays down guidelines that need to be followed by the foreign applicant while designating India in their international application. These guidelines are published by the Controller General of Patents, Designs and Trademarks (CGPTDTM). These guidelines are divided into 2 parts, part A talks about the responsibilities of Indian Trademark Office as the office of origin detailing fees, procedure and duration of filing and part B talks about responsibilities of Indian Trademark Office as the Designated Contracting Party detailing the procedure to be followed for dealing with the International Application from the applicant of another contracting state.
Filing for a trademark under Madrid protocol
It has become very convenient to file an international registration application for a trademark under Madrid Protocol. To submit such an international application through Madrid Protocol one needs to first file a basic application with one’s home country’s trademark office. This is a prerequisite for filing such an application. In the case of India, one needs to apply with the Indian Trademark Registry for the registration of the mark in India which is known as dependency of the mark. The international trademark registration will depend on this Indian application for the duration of 5 years. During this period, if there is any modification, cancellation, or withdrawal of the application in India then it will immediately reflect on the international application. In the case of India, to file an application under the Madrid Protocol through India, a person should be a citizen of India or should be domiciled in India or should have a real and effective business in India. It should be presented on the official form. Such an application has to be submitted to the WIPO only in electronic form. It should mandatorily specify the name and the address of the applicant and it should also contain a small representation of the mark. Once the filing of basic application is done the person is free to begin the process of the international registration. The international application will be presented to the WIPO by the office of origin, i.e. in this case the Indian Trademark Registry. WIPO will then review and will carry out a formality check and if there are no issues then the mark is registered and published in the WIPO Gazette. Later on, the application is forwarded to the Designated Contracting Parties i.e. to the trademark offices of the countries as specified by the individual on the application.
The Madrid Protocol just simplifies the application process; it has nothing to do with approvals. It will not grant the application in every country for which one has applied. It is granted by those specific countries itself. Each such individual trademark office of the country for which one has indicated in the application will examine such application and make a decision based on their specific trademark legislation. If during this process any opposition or objection is made then the provisional refusal is communicated to the WIPO who then communicates it to the office of origin, which in this case is the Indian Trademark Registry. Eventually, the trademark registry will communicate the same to the applicant, who gets a month to respond to the same. In case there is no such objection or the objections have been waived off then the Designated Contracting Party will grant protection to the trademark as a mark registered with their office. Eventually, each trademark office should notify the applicant within 12-18 months regarding such approval or rejection. Once the application is approved, then one needs to renew such trademark registration after every 10 years.
Conclusion
To conclude, the Madrid Protocol may save you time and money for obtaining trademark protection internationally, but it might also cause additional issues at the national level. Even under the national filing situation, the Indian Trademarks registry has not been able to entertain the filings because there is a lack of manpower. Now, after joining the Madrid protocol, it will become even more difficult to consider and handle both national as well as international filings. On top of all this, the international applications have to be processed within 18 months this leads to causing a delay in the national filings. Madrid protocol may have simplified to a greater length the international application process but there are still many drawbacks that need to be looked after. The effective utilization of this system in India will require greater administration and this will take considerable time.
Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.
LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join:
