This article is written by Shreya Patel. This article will give you a comprehensive understanding of international trademark registration. We are going to discuss some of the key topics such as the filing of the Madrid application, its fee structure, the pros and cons of the procedure, role of WIPO, and comparative analysis with various other international systems.
This article has been published by Shashwat Kaushik.
Table of Contents
Setting the scene
Suppose you are a juice company, and recently became very popular. Seeing the positive response, you decided to expand the business globally in 4 other countries. Now to protect the brand value, it is crucial to register the trademark. In the current globalised economy, with blurred borders, it is very vital to register the trademark. Won’t the procedure to register a trademark in all countries be too tiresome and lengthy?
No, it won’t be. Do you know why?
This is because of the Madrid System for international trademark registration. Under the Madrid System, business owners will just have to file a single application and they can protect their trademark in multiple jurisdictions. It’s like killing two birds with one stone.
We get trademark protection in more than one country and we have less work to do. As the trademark will be registered at one time, trademark owners can save time and money, and establish their brand without fearing any infringement.
The purpose of this article is to enlighten our readers about international trademark registration. With this article, legal professionals, professionals working in related fields, and students will get a comprehensive knowledge of the entire international trademark registration process.
Let’s dive right into the article without wasting any time!
How is the Madrid System legally backed
Let’s begin by understanding what the international trademark registration process is all about.
The two key frameworks that oversee trademark registration in multiple jurisdictions are:
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks also known as Madrid Protocol.
- Madrid Agreement Concerning the International Registration of Marks also known as Madrid Agreement.
You have to make sure that you do not get confused between these two. Despite having the same name, the Madrid Protocol is a separate treaty. It is not a protocol of the Madrid Agreement. The protocol and agreement together are known as the Madrid System.
| Madrid System = Madrid Protocol + Madrid Agreement |
The international system which is used for filing the trademark application is known as the Madrid System.
Easy right? Now let’s understand both individually to know how they are different.
Madrid Agreement
Let’s know about the Madrid Agreement in detail.
When was it established
Do you know when the Madrid Agreement Concerning the International Registration of Marks, also known as the Madrid Agreement, was established? You will be surprised. It was established in 1891.
Why was the agreement introduced
Why was this agreement even introduced? The main aim of introducing this mechanism was for a cost-effective and single registration process provided to the trademark owner.
Why register under the agreement
Now, you may ask why register under this agreement. Is it any different from normal trademark registration? The trademark registration under the Madrid Agreement is equivalent to trademark registration in all countries which are member countries.
Is the registration done only one time
Is the trademark registration a one-time thing under the Madrid Agreement? Can I renew my registration again? The registration is a one-time thing. While you can renew the registration again and again.
Can the registration be renewed
A renewal system was introduced along with the registration process under this agreement. The entire renewal procedure was simplified. It was done to make it easy for the owners who did business globally. We will learn more about trade renewal in the later part of this article.
Revision of the agreement over the years
The Madrid Agreement has been revised various times till now. We all know how important it is to be updated with changing times. The best example of this is in front of our eyes. Yes, you have guessed it right – the Madrid Protocol. Madrid Protocol is nothing but a modernised version of the Madrid Agreement. Due to the increased flexibility of the agreement, the Madrid Protocol was introduced.
The agreement was revised 7 times till 1980. Isn’t that surprising how laws keep on updating at such a fast pace? It was revised in Brussels in 1900, Washington in 1911, Hague in 1925, London in 1934, Nice in 1957 and Stockholm in 1967, and was also amended in 1979.
Let’s take a detailed look at what amendments were made each time.
| Revision | Reason for Revision |
| Brussels (1900) | More clear rules were established with the introduction of more strict rules for member countries. It was also made more accessible for all. The changes related to entitlement to get international registration. The changes were also made to registration fees. |
| Washington (1911), Hague (1925) and London (1934) | The following are the reasons for which the revisions took place:Due to less number of countries being a part of the agreement.Conflicts among the national laws.Lack of awareness in the member countries.To make it more cost-effective and user-friendly. |
| Nice Act (1957) | In this revision, the Nice Classification system was added. This system will categorise the goods and services into different classes. The same was made compulsory to follow by all the member countries. This revision was done to streamline the identification of goods and services. |
| Stockholm (1967) | The revision which took place at Stockholm was meant to update and simplify the application process for international trademark registration. The main goal was to simplify it more. |
Now we shall move to the Madrid Protocol. After understanding the Madrid Agreement it will now be easier for us to understand what the Madrid Protocol is all about.
Madrid Protocol
- If we already had the Madrid Agreement then why was there a need for the Madrid Protocol? The main role was to overcome the deficiencies of the Madrid Agreement. Deficiencies like very limited geographic reach, delays in the national registration process, more dependence on aspects of national examination etc were seen. Previously many countries did not also recognise the WIPO registration as valid.
- The protocol was concluded in 1989, 8 years after the Madrid Agreement. Over the 8 years, it was observed that the agreement had some deficiencies. The agreement was not able to attract more memberships. The countries were very few as the agreement had very rigid rules. Due to growing international markets, it was observed that we need a more comprehensive system to develop international filing.
- The main idea behind the introduction of the Madrid Agreement was still preserved in the Protocol.
Now that we have seen both the protocol and agreement, did you find anything different in them? Or was it the same to you?
You will find the answer to this in our next heading.
Comparison between the Madrid Protocol and the Madrid Agreement
Let’s compare both the protocol and the agreement. Are there some minor similarities or are they different from each other?
| Basis | Madrid Agreement | Madrid Protocol |
| Objective | The main objective of the agreement was to establish flexibility in the international trademark registration process to enhance the protection on a global level. | On the other hand, the main objective of the protocol was to make the Madrid Agreement more flexible and overcome its deficiencies. |
| Covers | Only individual states | Both the individual states and the intergovernmental organisations can be a part of the Madrid Protocol. |
| Application basis | Under the agreement, the trademark owner first has to have an application filed in their home country.For instance, if you live in India and want to apply for an international trademark. Then you will first have to register in India and then proceed with international protection. | While under the protocol, trademark applications are allowed on applications made in the home country. The application made in any one member country is also allowed. If you live in India and want to register the trademark in let’s say Australia and Bhutan. Then you can simply make an application in India. The same is explained later on in the article. |
| Fees | The fees are fixed for all the members as per the different processes. We will study this later in the article. | Here the fees are fixed as well but they might be different for the national applications. |
| Language used | In agreement, only French is used as the official language. | The protocol follows a trilingual system. English, Spanish and French all are used. |
| Refusal period for trademark | The trademark refusal period under the agreement is one year. | The period for refusing the trademark application under the protocol is eighteen months. An extension is provided if the authority deems fit to do the same. |
| Trademark validity time period | The trademark validity time period is twenty years. | The validity of the trademark is ten years. |
Are you well-versed in French? I would suggest that you learn it. It would be so easy for you to handle the entire process if you are well-versed in French.
Are all countries part of the Madrid System? Don’t know? Let’s find out.
What all countries are part of the Madrid System
The Madrid System is not a mandatory requirement. So it is not compulsory for all the countries to join this agreement/protocol. India is also a part of the Madrid System for international trademark registration. As of 2024 currently, there are 115 members across 131 countries.
Other than India, the following table consists of all the other member countries that have ratified either the Madrid Protocol or both.
| Member Countries | Madrid Protocol | Madrid Agreement |
| Afghanistan | June 26, 2018 | – |
| African Intellectual Property Organization (OAPI) | March 5, 2015 | – |
| Albania | July 30, 2003 | October 4, 1995 |
| Algeria | October 31, 2015 | July 5, 1972 |
| Antigua and Barbuda | March 17, 2000 | – |
| Armenia | October 19, 2000 | December 25, 1991 |
| Australia | July 11, 2001 | – |
| Austria | April 13, 1999 | January 1, 1909 |
| Azerbaijan | April 15, 2007 | December 25, 1995 |
| Bahrain | December 15, 2005 | – |
| Belarus | January 18, 2002 | December 25, 1991 |
| Belgium | April 1, 1998 | July 15, 1892 |
| Belize | February 24, 2023 | – |
| Bhutan | August 4, 2000 | August 4, 2000 |
| Bosnia and Herzegovina | January 27, 2009 | March 1, 1992 |
| Botswana | December 5, 2006 | – |
| Brazil | October 2, 2019 | – |
| Brunei Darussalam | January 6, 2017 | – |
| Bulgaria | October 2, 2001 | August 1, 1985 |
| Cabo Verde | July 6, 2022 | – |
| Cambodia | June 5, 2015 | – |
| Canada | June 17, 2019 | – |
| Chile | July 4, 2022 | – |
| China | December 1, 1995 | October 4, 1989 |
| Colombia | August 29, 2012 | – |
| Croatia | January 23, 2004 | October 8, 1991 |
| Cuba | December 26, 1995 | December 6, 1989 |
| Cyprus | November 4, 2003 | November 4, 2003 |
| Czech Republic | September 25, 1996 | January 1, 1993 |
| Democratic People’s Republic of Korea | October 3, 1996 | June 10, 1980 |
| Denmark | February 13, 1996 | – |
| Egypt | September 3, 2009 | July 1, 1952 |
| Estonia | November 18, 1998 | – |
| Eswatini | December 14, 1998 | December 14, 1998 |
| European Union | October 1, 2004 | – |
| Finland | April 1, 1996 | – |
| France | November 7, 1997 | July 15, 1892 |
| Gambia | December 18, 2015 | – |
| Georgia | August 20, 1998 | – |
| Germany | March 20, 1996 | December 1, 1922 |
| Ghana | September 16, 2008 | – |
| Greece | August 10, 2000 | – |
| Hungary | October 3, 1997 | January 1, 1909 |
| Iceland | April 15, 1997 | – |
| India | July 8, 2013 | – |
| Indonesia | January 2, 2018 | – |
| Iran (Islamic Republic of) | December 25, 2003 | December 25, 2003 |
| Ireland | October 19, 2001 | – |
| Israel | September 1, 2010 | – |
| Italy | April 17, 2000 | October 15, 1894 |
| Jamaica | March 27, 2022 | – |
| Japan | March 14, 2000 | – |
| Kazakhstan | December 8, 2010 | December 25, 1991 |
| Kenya | June 26, 1998 | June 26, 1998 |
| Kyrgyzstan | June 17, 2004 | December 25, 1991 |
| Lao People’s Democratic Republic | March 7, 2016 | – |
| Latvia | January 5, 2000 | January 1, 1995 |
| Lesotho | February 12, 1999 | February 12, 1999 |
| Liberia | December 11, 2009 | December 25, 1995 |
| Liechtenstein | March 17, 1998 | July 14, 1933 |
| Lithuania | November 15, 1997 | – |
| Luxembourg | April 1, 1998 | September 1, 1924 |
| Madagascar | April 28, 2008 | – |
| Malawi | December 25, 2018 | – |
| Malaysia | December 27, 2019 | – |
| Mauritius | May 6, 2023 | – |
| Mexico | February 19, 2013 | – |
| Monaco | September 27, 1996 | April 29, 1956 |
| Mongolia | June 16, 2001 | April 21, 1985 |
| Montenegro | June 3, 2006 | June 3, 2006 |
| Morocco | October 8, 1999 | July 30, 1917 |
| Mozambique | October 7, 1998 | October 7, 1998 |
| Namibia | June 30, 2004 | June 30, 2004 |
| Netherlands (Kingdom of the) | April 1, 1998 | March 1, 1893 |
| New Zealand | December 10, 2012 | – |
| North Macedonia | August 30, 2002 | September 8, 1991 |
| Norway | March 29, 1996 | – |
| Oman | October 16, 2007 | – |
| Pakistan | May 24, 2021 | – |
| Philippines | July 25, 2012 | – |
| Poland | March 4, 1997 | March 18, 1991 |
| Portugal | March 20, 1997 | October 31, 1893 |
| Republic of Korea | April 10, 2003 | – |
| Republic of Moldova | December 1, 1997 | December 25, 1991 |
| Romania | July 28, 1998 | October 6, 1920 |
| Russian Federation | June 10, 1997 | July 1, 1976 |
| Rwanda | August 17, 2013 | – |
| Samoa | March 4, 2019 | – |
| San Marino | September 12, 2007 | September 25, 1960 |
| Sao Tome and Principe | December 8, 2008 | – |
| Serbia | February 17, 1998 | April 27, 1992 |
| Sierra Leone | December 28, 1999 | June 17, 1997 |
| Singapore | October 31, 2000 | – |
| Slovakia | September 13, 1997 | January 1, 1993 |
| Slovenia | March 12, 1998 | June 25, 1991 |
| Spain | December 1, 1995 | July 15, 1892 |
| Sudan | February 16, 2010 | May 16, 1984 |
| Sweden | December 1, 1995 | – |
| Switzerland | May 1, 1997 | July 15, 1892 |
| Syrian Arab Republic | August 5, 2004 | – |
| Tajikistan | June 30, 2011 | December 25, 1991 |
| Thailand | November 7, 2017 | – |
| Trinidad and Tobago | January 12, 2021 | – |
| Tunisia | October 16, 2013 | – |
| Türkiye | January 1, 1999 | – |
| Turkmenistan | September 28, 1999 | – |
| Ukraine | December 29, 2000 | December 25, 1991 |
| United Arab Emirates | December 28, 2021 | – |
| United Kingdom | December 1, 1995 | – |
| United States of America | November 2, 2003 | – |
| Uzbekistan | December 27, 2006 | – |
| Vietnam | July 11, 2006 | March 8, 1949 |
| Zambia | November 15, 2001 | – |
| Zimbabwe | March 11, 2015 | – |
Are there any specific requirements that the trademark must have if we want to register under the Madrid System? Are there criteria for eligibility?
How will you know whether business comes under the eligibility criteria or not?
In our next heading, we are going to understand the requirements and eligibility for the Madrid System.
Who is eligible to register under the Madrid System
There are some conditions that must be followed when applying under the Madrid System. Let’s check out what all these conditions are!
Who can file under the Madrid System
In order to file a trademark application to get international trademark protection under the Madrid System, you have to:
- Be a national of the member country or,
- Have a business or be a domicile in any of the member countries where you want to register.
- You must have the trademark registered in the home country first if you want to file the same for international trademark registration.
This simply means that you can file for an application if you live in a country that ratified the protocol. Let’s take an example to get a better understanding.
Shilpa owns a business called ‘Kalikala’ in India. It is a fast fashion store. She wants to register her trademark under the Madrid System as she is planning to open new branches. She has decided to open a branch in Dubai and Brazil.
Here in this case Shilpa is eligible to file the application as India is a member country.
But what if Shilpa lived in Dubai? And let’s say Dubai is not a member country. Then what? In that case, she is not eligible. However, if Shilpa lives in Dubai and is a citizen there, and if she has a registered office in India, then she can file her application.
Did you see how easy it is for a business owner to get it done with just one application?
Now you may have a question: what difference can one see in national and international application filing? No worries, your questions are getting answered in our next heading.
Similarities and differences between national and international application filing
Let us understand the comparison in a tabular format for better understanding rather than long paragraphs! Are you ready to file for trademark registration?
| Basis | National Trademark Application Filing | International Trademark Application Filing |
| Process of filing application | For the national application filing, you have to file a separate application for different countries. | However, when it comes to international application filing, filing under one roof does the work. You can protect the trademark with just one application in multiple countries. |
| Langues and fees hurdle | With separate application filing for separate countries also comes the language barrier. All countries have different languages used as their official languages. Similarly, the fee structures are also changed and so does the currency. For instance, Rs. 1000 for application forms in India will be only 10 Swiss Francs. If a currency is weak in one country, it will be more expensive for them to register in a country with a strong currency. | Only 3 languages (English, French and Spanish) are used under the Madrid System and it has a streamlined fee structure as well. |
| Application examination | All the countries have their own examination processes. In national application filing it might take more time and would be too confusing to keep up. | Under the international trademark filing, WIPO is the only body that takes the trademark examination and then moves forward with the country-specific examination. |
| Management | If you get your trademark registered separately, then you will have to remember lots of important things like their renewals and time-to-time updates. | When it comes to international trademark application filing, a centralised system is used to manage all these details. So it makes it easy. One- click and you can see all the important information. |
| Cost | The cost will be higher when we are filing applications separately from country to country. | The cost will be comparatively low as we file for one time only. |
Can we register any trademark in any country? Are there some standards that we have to follow in order to be eligible for registering the trademark with Madrid System?
Yes, we do. There are some general rules which all the applicants have to follow to get accepted under the Madrid system for registration.
What trademarks are accepted under the Madrid System for registration
A trademark is accepted to be registered under the Madrid System for registration if it is in compliance with the definition given by the WIPO. The trademark should also be in compliance with the standards followed in the member country in which it is being registered. The definition given by WIPO says that any mark which can help in distinguishing one product or service of one enterprise from another can be considered as a trademark.
Shellco was a toy company that applied for trademark registration. Their mark was S and C written in uppercase with a circle around it. The mark was registered successfully. Why you may ask?
Firstly no other mark similar to this was present in the market. Second, this mark did not explicitly promote the company and its product. And most importantly, it was graphically represented as well.
What trademarks are generally not accepted then?
A trademark will not be registered if the work/phrase is too common. You cannot trademark rubber if you sell rubber sandals. That’s not how it works. The mark also has to be something novel. If Shellco already is registered by a company, you will not register for the same.
Generic terms, descriptive marks, marks which are similar to already registered ones, or marks which tend to be offensive in the country the application is being filed. These types of trademarks are often considered non-acceptable for registration.
Generic terms are words which we use very commonly like apple, glue, fan etc. A similar trademark includes, for instance, a shoe brand called Sike. We already have a shoe brand, Nike. Both these terms only have the first alphabet different. This might cause confusion.
Now that we know who can and what type of marks are accepted to get registered under the Madrid System, let us move to the heart of the process. Which is?
Yes, you guessed it right – the application process. We have to know beforehand what all the steps are.
Nuts and bolts of filing under the Madrid System
An application process consists of various different stages. It’s like climbing the stairs. You keep on climbing until you reach the top – which is getting trademark registration in our case. We have to ensure that we do not miss a stair and tumble down.
You move to the next stage only when you have cleared the prior one. Let’s jump into the journey of the Madrid System.
Conducting a prior search for a similar trademark
Before we file an international trademark application, we have to ensure that we have done a thorough check of the market. You have to see that no similar mark as yours is already available and registered in the market. Why do we do this? We do this to avoid the possibility of cancellation of our international trademark application.
For instance, I wanted to apply for a trademark which is a lotus and a girl standing beside that huge lotus flower. I applied for the same without doing a preliminary search in the market. During the examination process, WIPO found a similar mark with a lotus and a girl standing beside it. The only difference was that the girl in both the marks stood on the opposite side.
The other mark was already registered and in use for 7 years, hence my mark was refused.
So, in order to avoid such instances it is advised that we conduct a search before the trademark application is filed.
Filing the application for trademark registration
The first step in the process is to file the international trademark registration application in the home office.
Application made from the home office
- The application is to be first filed in the home country i.e. the office of origin.
- The applicant has to file the trademark application in the regional intellectual office, in our case it’s the Trade Mark Registry.
- This application that is made in the home country is also known as a basic mark.
- After the international trademark application has been made in the home office, the trademark registry inspects and certifies it.
- If there are no problems, the application for international trademark registration is moved forward to WIPO.
Did you know that we can directly file the international trademark application by visiting the WIPO’s official website?
Yes, you have read it right! We can. Let’s see what steps we have to follow if we want to directly file with WIPO.
Filing application directly with WIPO
You have to follow the following steps to directly file with WIPO:
- Visit the WIPO’s official website. You can simply click here also – https://www.wipo.int/en/web/emadrid.
What’s the next step then?
- Then you have to enter the WIPO account details to log in.
- Select the new application option on the screen. Simple right?
- Now upload all the details which are required and fill out the application
- Pay the necessary fees, because that’s the most important part.
- Submit the application after thoroughly checking it.
You can directly apply under the Madrid System using their online services or you can also apply in your home country’s IP office. We will discuss the same later in the article.
After knowing the application process, the next important thing you must be aware of is the total cost that you will incur in the entire process.
Fees for filing an application under the Madrid System
Let’s be serious, the cost of filing an application is one of the vital points to consider as well, especially for businesses which are just starting.
The below table mentions the fees for filing the application under the Madrid System.
| Particulars | Swiss Francs | Rupees |
| The basic feeThe mark is in colourThe mark is black and white | 903 CHF653 CHF | Rs. 86422.86Rs. 62568.58 |
| If we want to file for any additional class of goods or service | 100 CHF | Rs. 9581.71 |
| Designation fees Complimentary feesIndividual fee | 100 CHFThe same will be fixed by the contracting parties. | Rs. 9581.71 |
| When irregularities are found in the classification of goods or services.When the classification is incorrect.When the goods and services are ungrouped. | 77 CHF + 4 CHF per term (beyond 20)20 CHF + 4 CHF | Rs. 7377.92 + Rs. 383.27Rs. 1916.34 + Rs. 383.27 |
| Subsequent designation feesBasic feesIndividual fee per contracting partyComplementary fees | 300 CHF100 CHFFixed by contracting parties | Rs. 28745.14Rs. 9581.71 |
| Fees for renewal (10 years) Basic feesComplementary feesSupplementary feesGrace period surcharge | 653 CHF100 CHF100 CHFFifty per cent of the basic fee | Rs. 62568.58Rs. 9581.71Rs. 9581.71 |
There are various other different types of costs which are incurred at various stages in international trademark registration. You can visit this link for further details – https://www.wipo.int/web/madrid-system/fees/sched.
After the application is filed, the next major step is the examination of the application. This is the most important step.
Examination and registration under the Madrid System
This step makes and breaks the entire registration of the trademark. After the home office gives clearance on the application filed by the applicant, the same is forwarded to the WIPO.
International examination process under the Madrid System
WIPO then carries out a formal examination of the application filed. If all goes well, then the application is registered in the International Register. The application is further also published in the WIPO Gazette of International marks (same as we do in India by publishing the mark in a trademark journal). After the publication, WIPO will send the international certificate for application to the Intellectual Property (IP) offices where the applicant wants to register.
From here onwards the application will now be examined by the IP offices where the registration is to be done. Let’s see the national examination process first!
National examination process under the Madrid System
The regional or national IP offices conduct a thorough substantive examination of the application after WIPO. The home country checks whether the trademark which is filed by the applicant is in compliance with their legislation or not.
For example, as per our Indian trademark laws, a mark can be registered if it has distinguishing features, is not identical or similar to an existing registered trademark, does not hurt religious sentiments and is not against public morality. So when a mark is being examined all these points will be considered.
If the home office accepts the application, then the same is informed to WIPO. WIPO further informs the applicant about the same. However what if the national IP office refuses the registration for some reason?
| Situation | Particulars |
| Possibility of rejection | It might be possible that the international trademark application is either fully or partially rejected by the home office. If the national IP office feels that the applied mark is identical or similar to an already existing trademark then it may be rejected fully. It can also happen that the mark has some characteristics which are against the rule of the national IP officer, then they can partially reject the trademark. The IP office can put some conditions forth to be followed if the mark is registered. My dad recently applied for the trademark for our family business. The trademark was similar to an existing one but in a different trademark class. So the Registrar put forward one condition (a slogan below the mark) which was only in our trademark to be compulsory use. |
| Contest the refusal | If the trademark application is refused during the national examination process by country then in that case the applicant can contest the refusal. Earlier all the countries had their own time period to respond to a provisional refusal. This could range from 15 days to 15 months.As per the new changes applicant can appeal within sixty calendar days or 2 months. This new change was introduced in order to have a harmonised time limit. This minimum time limit is set to be effective from 1st February 2025. The rules and regulations of the country which has refused the application are to be followed.For example, one company has filed for a trademark in GrowGreen in Ireland. The IP office of Ireland refused the application. The IP office stated that the mark was very descriptive and such marks are not allowed for registration. So in this case the applicant contests the refusal by stating how the mark is not descriptive and provides evidence for the same. |
What happens then? Is there any step which can be carried out by the applicant? Yes, there is! What happens in case of opposition to the registration from a third party? It can be possible that a third party in the member country opposes the registration. They might feel that the applied mark infringes their already registered trademark.
Let’s see what steps we can take in these kinds of situations.
Opposition process under the Madrid System
If any party doing business, or residing in the country where the trademark is to be registered feels that:
- The said mark will infringe their registered mark, or,
- Cause any kind of monetary or non-monetary damage to their business.
If a mark is very similar or identical in nature to an already registered trademark then it will infringe the registered trademark. If a mark ‘LOTUS FOUNTAIN’ is already registered then you cannot register a ‘LOTUSS FOUNTAIN’.
All the consumers of ‘LOTUS FOUNTAIN’ will misinterpret ‘LOTUSS FOUNTAIN’ as the original brand and buy from there. This will cause monetary damages to the ‘LOTUS FOUNTAIN’ company. If ‘LOTUSS FOUNTAIN’ uses bad quality materials the reputation of ‘LOTUS FOUNTAIN’ will get tainted.
Then in such cases, the third party can file for opposition to the registration. The opposition has to file within three months from the date of publication in the WIPO Gazette of International Marks.
Let’s understand the same using a hypothetical situation.
Illustration
Mr. A has applied for trademark registration in Iceland and Hungary. A business (Excel Enterprise) from Hungary feels that Mr. A’s mark and their registered mark are very similar. Both the marks, if put beside each other may cause confusion. This can damage their business in Hungary. So they file for an opposition.
Now, it is very important to file the opposition in the correct and acceptable timeline. Mr A’s mark was published in the WIPO Gazette of International Marks on 3rd March 2024. So, Excel Enterprise has to file their opposition within three months from 3rd March 2024 i.e. 3rd June 2024.
WIPO then informs the applicant i.e. Mr. A about the opposition and is given a chance to be heard. WIPO is responsible for making a decision after the reply from the applicant. WIPO will examine the opposition, the reply, and the evidence submitted from both sides and will decide whether the opposition can be dismissed or upheld.
If WIPO also agrees that the said mark is infringing an already registered trademark, then the mark will not be registered in the designated country. If it gets dismissed, then the procedure moves forward. What happens if the applicant is not satisfied with the decision of the WIPO? Can he appeal it? Yes, he can file an appeal.
At this point in our article, we are now aware of the nitty gritty of the international trademark registration point. However, one very common question still remains unanswered. The majority of the people looking to register their trademark either nationally or internationally have the same question.
How much time will it take to complete the entire process and get our trademark registration?
I mean, I agree with it as well. Knowing the time frame for the registration helps give us an idea of how to plan things further.
So, let’s move to our next heading to find the answer to this question.
Registration time frame under the Madrid System
The entire international trademark registration process consists of various steps. The entire process usually takes twelve to eighteen months. As the entire process is quite complex and consists of numerous stages, the exact time of the international trademark registration process cannot be predicted.
The time frame usually depends from case to case. Let me explain the same with an example.
Illustration
Raman has filed for an international trademark in Brazil, Canada and China. His mark is quite unique in nature. Hence it got approval for registration from the home office, WIPO and all three countries in the first instance. So in this case the entire international trademark registration might end in 12-18 months. The member countries are required to refuse or grant the trademark registration in 12-18 months max.
What will happen if the trademark application is opposed by any third party in any of the countries where the mark is applied for registration? It will result in opposition to the registration. This will also result in taking more time to get the registration.
Monitoring a trademark after the registration is so important. Please never forget that! Let’s learn about monitoring trademarks in our next heading.
Monitoring the unauthorised use of trademark
My friend has a shoe company. She makes shoes with a specific type of heel which protects from shoe bites for a long period of time. She registered a trademark for her company. In a few months suddenly her sales started to decline. She came to know that a similar trademark has been registered for a shoe brand and the consumers purchased from that brand as they have a similar trademark. Why did this happen? My friend has registered her trademark. What she missed was trademark monitoring.
It does not end with merely registering the trademark. We have to regularly check and monitor the trademark throughout the registration process and even after registration. You can use WIPO Madrid Monitor to keep all your international registrations in the loop.
Do you know why it is advised to monitor the trademark even after registration? It is done to ensure that after your international trademark registration is done, no one tries to infringe the same. If we find someone trying to copy us then we can simply oppose their trademark application.
There are so many things to take care of! Let us also see other important aspects that we need to know after the registration is done.
Effective management of international trademark registration by the Madrid System
Is registering with the Madrid System enough? There are so many post-registration things which are to be understood as well. This is what we will do under this heading.
Now that we have registered the trademark, it will be registered forever, right? No, it won’t be. The registered trademark owner will have to renew the registration from time to time. Along with the renewal of the trademark, the owner can assign and license it as well.
Too much information? Don’t worry, let’s take each point individually and learn about it.
Trademark renewal and extension
The international trademark registration is valid only for a certain period of time given by the Madrid System. If the international trademark registration is not renewed within the given time period, it may lose its registration status.
The validity of the international trademark registration under the Madrid System is for 10 years. After 10 years the registration is to be renewed again. For example, Shika registered her trademark under the Madrid System on 13th August 2000. Then she will have to renew the registration on or before 13th August 2010.
There is no fixed number of times when one can renew their trademark registration. The trademark renewal can be done as many times as the applicant wants it. Isn’t that great? It’s only one time that you have to ensure that the mark gets registered properly then it’s yours for the lifetime!
The trademark renewal can be done both online and offline. People currently prefer online renewal only. You simply have to visit the website and apply for the renewal. Takes less time and can be done from anywhere.
A request for renewing the trademark registration is to be done three months from the date when the registration is going to end. Too confusing? No, worries let me put it in a hypothetical situation with dates then you will get it in one strike.
Ankit got his international trademark registration approved on 24th March 2000. So he will have to request for renewal around 24th January 2010. The renewal can also be requested within six months after the date of expiry i.e. 24th September 2010. This is known as the grace period. Your renewal time period has ended, however you are provided an extra 6 months to do the same. However, the extension is only given if there is a valid reason for not filing the renewal request at the given timeline.
If I have used my trademark for a few years and now I want to give it to someone else. Can I pass the registered trademark along with the registration to someone else?
Of course, why not? This is nothing but a trademark assignment.
In our next heading will learn about trademark assignments in quite a detailed way so all your questions are answered.
International trademark assignment under the Madrid System
Before knowing how to assign an internationally registered trademark, let me first give you a simple and sweet explanation of what exactly trademark assignment means?
Trademark assignment basically means when the trademark owner passes his rights to someone else. All the interests, titles, benefits, and rights are transferred. Trademark assignment can be for various different reasons:
- Mergers
- Acquisitions
- Changes in business structure
- Changes in business owner etc.
You can change the ownership of the goods or services in all of some of the member countries by visiting this link.
Following are the steps for changing the ownership of the trademark registered with Madrid System.
- Visit the option of Change Ownership on the eMadrid page.
- Log in using your WIPO details.
- Select the trademark for which you want the change in ownership.
- Complete the entire form.
- Make the payments
- Submit the form.
The cost of changing the ownership after the trademark assignment is 177 Swiss francs.
Now we know that trademark assignment transfers the complete ownership of the trademark. But what if I do not want to completely transfer all my rights? And relinquish some control?
That’s where trademark licensing comes into play.
International trademark licensing under the Madrid System
International trademark licensing means when the trademark owner lets a third party use his registered trademark in exchange for consideration of some type or of money. In trademark licensing, the ownership of the trademark remains with the owner. While some of the rights are given to the licensee to use the trademark. For example, Mcdonalds. We all know that the original owner of McDonalds does not work in every shop. He has given certain rights to use the McDonalds trademark to different people.
It is not compulsory to register a trademark license with an international register under the Madrid System. You can file Madrid System Form MM13. The cost of recording the trademark license is similar to trademark assignment which is 177 Swiss francs (Rs. 16954.06).
Why register your trademark under the Madrid System
Till now, we read how to register with Madrid System, who can register and what can be the approximate cost for it. But the main question is why should we register our trademark under the Madrid System?
How will it be beneficial to me?
Below are some of the key benefits.
No one can copy your brand
The first and foremost benefit of registering the trademark with Madrid System is that one can protect their trademark on the international level. When you have registered your trademark no one can copy it. With international trademark registration, brand owners can sit without worrying.
If a competitor of your company tries to copy your trademark, for example, your trademark consists of a yellow circle with a tulsi plant in it and the competitor’s mark is a red circle with a tulsi in it. This is an infringement of the trademark. You can legally ask him to stop using the mark.
You know what? It can also save us a lot of money. Thinking about it? In our next advantage, we will see how cost-effective the Madrid System can be.
Saves your hard-earned money
The next advantage of registering a trademark with Madrid System is that it requires a single application. When it comes to national filing, if you have to register a trademark in 5 countries you will have to register it separately all five times. Just imagine how much time and money it will cost you. With the Madrid System for international trademark registration, you have to do the entire process only once. All the paperwork will be submitted only once.
For example, if you want to register your trademark in 5 countries. Let’s suppose each country has Rs. 5000 as its application fees. Then you will have to pay Rs. 25000 just for the application form. Too expensive. With the Madrid System, you will have to pay the application only once and not five times.
Can the Madrid system help in management and make things streamlined for applicants? Let’s move to our next benefit to know more in detail.
Handling the registration process becomes streamlined
Madrid System works as the one-stop solution for international trademark registration. With WIPO and Madrid System you not only register for the trademark. It also provides a great platform where all the multiple registrations can be handled and overseen by the owner. For instance the Madrid Monitor. All the registration-related processes are done on one website, which makes it easy to handle. The entire international registration process becomes streamlined.
You only tell me what will be easy?
- Having to manage 5 different national IP websites or,
- One combined website for all
Of Course the B option. With the Madrid System, you can see all your applications and their status in one place, all together. No need to keep visiting different websites.
Legal protection is available
Are you aware that you can sue someone if they use your trademark without asking you? Yes, you can. If you find that a third party is using your trademark without your permission you can file a case against them in court. If your trademark is registered with Madrid System, your trademark is legally protected on a global level.
For instance, if your office is located in India. You have different branches in the other 4 countries. You have registered your trademark with Madrid System. What if one day, you find a business infringing your trademark? It is happening in one of the 4 countries where you have registered the mark. In such cases, you can legally sue them for infringing your mark and take legal steps against them.
There’s no rose without a thorn. Let’s take a look at some of the downsides of the Madrid System.
Flip side of the Madrid System
Like a coin has two sides, there are some challenges and loopholes found when the Madrid System was implemented. Let’s see some of the loopholes and challenges which the trademark applicant faces.
Challenges due to different jurisdictions
All the countries have their own set of rules and regulations for trademark protection. They follow their own criteria for registration. With different jurisdictions, there might be challenges due to different languages too. When a trademark is registered in multiple jurisdictions, it might happen that all applications will not move at the same speed.
Registering a trademark in one country can take 9 months while the other can take 13 months. It might also be possible if you get your trademark registered in one country while the other does not give registration. It is also advised to us to conduct a preliminary trademark search so that we can avoid any conflicts beforehand only. So we can minimise opposition in multiple jurisdictions.
The same can be done by searching the trademark in the list of registered trademarks published by the country. Like in India, you can visit the public search of trademark websites by clicking on this link – https://tmrsearch.ipindia.gov.in/tmrpublicsearch/. After that, you type your word there along with the trademark class in which you want to register. All the trademarks which are currently applied in India along with their registration status.
To understand it more clearly let me explain using a simple example.
Illustration
We all know that there are different laws in different countries, right? The same is applicable for intellectual property laws as well. The IP laws will be different in India as compared to that in Australia. So during the national examination process, it might be difficult for us people to oversee all applications at once.
It can be that the application in the Indian IP office is at the last stage while the one in Australia has not moved forward at all. Hence, despite making a single application for the registration challenges may arise due to different jurisdictions in the examination process.
Chances of refusal increases
With multiple jurisdictions, the chances of refusal might also increase. As we have already discussed, all countries have different sets of laws, it might be possible that your trademark violates the rules of one country while getting registered with another. It is also very hard to do a pre-filing trademark search on such a global level to check whether a similar trademark is present or not. This can also increase the chances of refusal.
Illustration
A company named NatureCo has applied for international trademarks in Brazil, India, France and Austria. Let’s say the trademark is distinctive in Brazil, Austria, and France. However in India, the same is objected to and then rejected as a company named NatrueC is there.
Dependence on national laws and processes
The trademark application done with the Madrid System is subject to the scrutiny of national processes and laws. There are many other hurdles like renewal period differences, inconsistent scope of protection, and costs other than filing costs.
Illustration
We already know that all countries have their own set of rules. Even if the trademark application is made using WIPO, all countries use their own laws for the examination of the said trademark. If Germany and Japan register the trademark in 6 months it might be possible that Brazil will take 12 months. It all depends on the country. Even if the application is made at the same time the registration time can vary.
Are there other international trademark filing systems similar to the Madrid System? Let’s find out!
In our next heading, we are going to see how the Madrid System is different from other similar trademark systems found globally.
How is the Madrid System different from other International trademark systems
We already know that if we want to protect trademarks in multiple countries, the Madrid System is the best option. What if my business and goods are exported more in Europe than in other countries? Can I register the trademark just in Europe?
European Union Trade Marks (EUTM) vs Madrid System
The EUTM is also a trademark registration platform similar to the Madrid System. The only key difference between them is that EUTM is exclusively for applicants who want to register their trademark only in the European region. Any person in the world can apply for registration with EUTM. Like the Madrid System, only one application is to be made to get registered in all countries under the European Union.
It is very cost-effective to register with EUTM rather than registering with 27 different countries with their own national registration. The European Union Intellectual Property Office (EUIPO) administers the registration and is located in Spain.
How did Brexit affect international trademark application
In 2020, the United Kingdom left the European Union. The transition period was decided to end on 31st December 2020. All the trademarks which were registered under that period will not be affected. Seems like a good decision right? It will help in reducing the confusion. All the international applications made to protect the trademark will be under the EU’s protection only.
After 2020, from 1st January 2021, if you register an international trademark in the EU, it will not be protected and be considered valid in the United Kingdom. But don’t worry. There is a withdrawal agreement which says that all the prior registered trademarks will keep on being considered valid.
Choosing the right trademark registration system for the clients is very crucial. Let’s see what are the repercussions if not done carefully.
Importance of selecting the right trademark registration system
When one is deciding to register their trademark they should consider their client base. For instance, if your clients are based only in your home country then simply registering with the National IP office will be enough.
However, if your goods and services are exported to different countries and sold there, then you can also think about registering the trademark with the Madrid System. We already know how easy the Madrid System has made it to register the trademark with a single application in multiple jurisdictions. However, if your goods and services are exclusively sold in Europe, then you can register your trademark with European Union Trade Marks (EUTM).
Who can help us out? An attorney? Being a trademark attorney is a big responsibility. A trademark attorney is the only person who is fully aware of the entire trademark process in detail. Trademark applicants put a lot of faith and trust in the trademark attorney.
In our next heading let’s read what tips and guidance should be taken from the trademark attorney so that future trademark attorneys and legal students planning to specialise in IP can learn from them.
Essential tips and guidance by trademark attorneys
When it comes to international trademark registration, the following are some of the tips and guidance for trademark attorneys to ensure that their clients get their international trademark registration.
- Will my trademark attorney advise me on where to register my trademark? Yes, a trademark attorney will advise you on where to register your trademark and will also guide you in expanding your business on a global level and how to protect your brand name.
- Is it the duty of the trademark lawyer to check the application before submission? Absolutely! The lawyer should always be fully aware of all minor and intricate application details.
- Will hiring a local lawyer give you an upper hand? They can utilise their knowledge of local laws and ensure that the clients have smooth trademark registration in their respective national IP offices.
- The cherry on the cake is that these trademark attorneys are fully aware of the Madrid System application process. This helps them in explaining all the details to their clients to maintain clarity and transparency.
Does it end here? No, not at all.
- The attorneys will also guide us when we are choosing the mark to ensure that it is legal and original. This will reduce such a big tension for the clients.
- A trademark lawyer not only advises on the mark but also advises us on when to start with the application so that we do not get late and lose the mark. Isn’t that great?
- Not only this they also advise on which trademark class to choose and what all countries should be registered in. Legal professionals further can also guide businesses who are looking to expand their business. They can ensure that all their IP rights are protected beforehand only. This increases the number of registrations of the Madrid System.
A glimpse into the future
We all know how important it is to stay updated with the changing times. Our parents did not have mobiles in their childhood but in the current time, mobile is one of the most basic necessities. As our parents learnt its operation or use with time, the same logic applies to laws, systems, and policies as well. They need to be amended from time to time. We see how fast we are moving in the world today! We need to keep up! It is crucial to have our laws updated as per the latest time, only then it will make sense to have laws to protect people.
The Madrid System has been also amended over the years to ensure that it coincides with emerging trends and changing dynamics.
One of the recent amendments in the Madrid Protocol took place on 1st November 2023. Let’s take a look at the changes which were introduced with the 2023 amendment.
More clear deadlines and provisional refusals
All the national trademark offices are now required to state all of their deadlines related to responding to the reviews, refusals, and appeals. If any member country fails to do so, WIPO can cancel their refusal of the trademark protection. This action will be taken to reduce the confusion and increase the clarity amongst the trademark applicants.
Do you know why we need clear deadlines and provisions for refusals?
With a more clear deadline, applicants like us can respond to the trademark objections more effectively. We can also plan our legal strategy in advance with much clarity. If the deadlines are clear we can also ensure that we do not miss any important dates.
Refusals will now be based on prior rights
With this amendment, the National Trademark offices will now have to mention the information about the person who had the prior rights to the trademark in case of oppositions and refusals. As the refusals are now based on the prior rights a more robust and solid trademark protection can be achieved. The entire trademark registration process will be more fair and will have a much faster dispute resolution.
Will it impact the trademark owner? Let me answer that. With more clear guidelines and deadlines, the working of the WIPO and the home IP offices will be much smoother now. The trademark owners will have transparency and can address the issues with more confidence because now they know exactly what is going on.
Are there any changes which are planned for the future? Yes, there is one. It was planned to introduce a change in application viewing. The Madrid System will now give priority to older applications which coincide with the application. Applications by nationals will be a priority. These types of national applications will get priority if they include a broader class of goods and services.
Now you may think what is a broader class of goods? A broader class of goods means when the trademark is protected in more than one trademark class. It may happen that my product falls in one trademark class while the raw material that I make falls into another. For instance, if you manufacture precast fencing walls, then the product will come under a different trademark class. In order to make the precast fencing wall you will need cement, sand and other raw material which will come under other trademark classes.
Let’s move on to our next heading where we will see how the Madrid System has been effectively helping businesses in international trademark application.
How Madrid System helps in protecting trademark
Now let us see how over the years Madrid System has helped various companies in protecting their trademark on the global level.
Case study of a successful international trademark registration
When someone asks me which famous company protected its trademark using Marid System? The first company that comes to mind is the Alpha Group. Does it ring any bells? How about when I say Chenghai Auldey Toy Industrial Company? Yes, I am talking about China’s top toy company. The Alpha Group is one of the most successful brands in the entire Asia. The company started with just making toys. Later they ventured into virtual reality, theme parks, films, cartoons etc.
Since 2000, the company has been relying on the Madrid System to protect all its trademarks on the global level. The company currently has 52 international registration under the 107 member countries. With the Madrid System, the company was able to register the trademark very easily. How can we stay updated about our applications? The answer is with WIPO and Madrid Monitor. Both help us effectively stay updated about our registration.
And oh yes, I forgot the most important thing! It helps with trademark renewal as well. And we know how we have to get our registration renewed. One of the biggest challenges that the company faced was trademark infringement on a global level. It is so hectic and time-consuming to see and keep a check.
I mean let’s be practical. We all know that the company cannot know who uses their brand name in the entire world. With the Madrid System, the company was able to face hurdles like trademark infringement on a global level, trademark squatting etc.
As we come to the end of the article, let’s have a quick recap and see what we have learned from the article.
Lessons learned
At its core, the introduction of international trademark registration has been one of the best revolutionary steps. In this article, we went through the journey of learning who can register under the Madrid System, what types of marks are accepted to be registered and how to file an application for the same. We did not stop there! We also understood and explored the examination and opposition process under the Madrid System.
We saw that by registering under the Madrid System we can protect our trademark by making a single application. Similar to our national rules this registration also needs to be renewed every 10 years. If there is any dispute between the applicant and a national office? We also saw that. In this case, WIPO will play the role of mediator and try to resolve the same. With emerging trends like fully online applications, online management databases for efficient Madrid System are not holding back either.
We know how important the Madrid system is! If there was no such platform to register a trademark on a global level business, people would have seen stars in the daylight! It would consume so much of their time and money. The Madrid System helps these businesses create a global identity and also helps in protecting it.
Have you ever thought about what challenges the companies, you, and I would have faced if the Madrid System did not exist?
Frequently Asked Questions (FAQs)
Why should we register our trademark with the Madrid System?
The primary advantage of registering with the Madrid System for international trademark registration is filing a single application for trademark registration in multiple countries.
Is there any difference between national filing and international trademark filing?
The key difference between international trademark filing under the Madrid System and separate national trademark applications is that you can file a single application. Only a single application is to be filed and you can apply for registration in more than one country at once.
On the other hand, in separate national filing, you have to follow the entire registration process again and again for all countries.
Can an applicant make changes related to the addition or removal of member countries in the application?
Yes, we can remove or add member countries to the trademark application. We can expand the scope of protection if needed.
What can cause the refusal of an international trademark application made under the Madrid System?
Some of the common reasons for refuting a trademark application under the Madrid System are:
- Lack of distinctiveness in the mark
- Conflicting trademark
- Violation of local laws and regulations, etc.
How is the dispute resolution done under the Madrid System?
The WIPO handles all the trademark disputes which occur at the time of Madrid System registration. The centralised process handles all the disputes. All the communication is done by keeping WIPO in the loop.
How much does it cost to apply for the international trademark under the Madrid System?
The basic fee for registering a mark in black and white colour is 653 Swiss francs (Rs. 62,049). While for a colour mark, it is 903 Swiss francs (Rs. 85,805).
How did Brexit affect the international trademark registration under the Madrid System?
From 1st January 2021, all the trademarks of the EU were not covered in the United Kingdom as with Brexit both EU and UK got separated. However, the trademarks which were registered prior to 1st January 2021 will still be considered.
Is email address a key requirement when I am applying under the Madrid System after COVID-19?
Yes, as of 2021, the applicants including the new owners and the representative all have to give their email addresses when they are submitting the application for an international trademark agreement.
Can I check the status of my application? Where can I see the status?
Yes, we can check the status of our application. We can check the status online by visiting the E-Monitor registration option on the eMadrid website.
References
- https://ipindia.gov.in/writereaddata/portal/ipoguidelinesmanuals/1_93_1_the_madrid_protocol.pdf
- https://www.wipo.int/en/web/madrid-system/w/news/2021/news_0003
- https://blog.ipleaders.in/registering-trademarks-internationally/
- https://www.wipo.int/en/web/madrid-system/members/index
- https://www.wipo.int/madrid/memberprofiles/
- https://www.wipo.int/en/web/madrid-system/madrid-e-filing-apply-for-international-trademark-protection-online
- https://www.lexology.com/library/detail.aspx?g=ed8b4684-1b5c-4ab4-8042-0da3d10e0159
- https://www.wipo.int/en/web/madrid-system/how_to/manage/license
- https://www.wipo.int/en/web/madrid-system/how_to/manage/ownership
- https://www.wipo.int/en/web/ip-advantage/madrid-system-stories
- https://www.inta.org/perspectives/ip-snippets/united-kingdom-brexits-impact-on-madrid-trademarks-designating-eu/
- https://www.wipo.int/en/web/madrid-system/w/news/2022/news_0014
- https://www.wipo.int/export/sites/www/sme/en/documents/pdf/ip_panorama_12_learning_points.pdf
- https://www.mewburn.com/law-practice-library/european-union-trade-marks-the-basics
- https://www.lexisnexis.com/practiceareas/ip/pdfs/MadridProtocolPamphlet.pdf?srsltid=AfmBOoqPjHecAS-YjPPMwSXPXq-HPIszkgptL2L4bjEPO_d636vs9YzB
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