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Obtaining a trademark requires a business to submit making necessary forms with the Trademarks Registry in India (detailed procedure is governed under the Trade Marks Act, and is available here). Unfortunately very few businesses have remained local today –

This presents a huge problem for Indian exporters. However, the protection offered to the registered proprietor of the trademark under this law extends to India alone.

Traditionally, trademarks granted by a particular country served to protect the interest of the proprietor only in that country. Any person interested in protecting his trademark internationally was thus required to file for trademark registration in each individual country where such protection was sought. This not only caused multiplicity of applications and inconvenience to the potential applicant but also increased costs for him. This was sought to be redressed by the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 1989 (Madrid Protocol).

 

Madrid Protocol

The Madrid Protocol is an international treaty that forms a part of the Madrid System for the international registration of marks. It was brought to put an end to the onerous requirement of registering trademarks individually in every country by a potential proprietor. It enables the trademark owners to have their trademarks protected in any of the countries that have joined the Madrid Protocol by filing a single application, called an ‘international application’. An international trademark so registered is treated at par with a domestically registered mark in countries designated by the applicant for this purpose. Thus, the protocol provides a cost-effective way for individuals and business concerns to ensure protection of their marks in multiple countries by filing a single application, in a single language (English, French or Spanish), at a single office (International Bureau of WIPO, Geneva), with a single set of fees, in a single currency (Swiss Francs).

At the very outset, it is important to note that the Madrid Protocol does not provide for an ‘internationally effective’ or ‘internationally enforceable’ trademark but for ‘international registration’ of a trademark. Thus, a mark which is filed for an international registration does not by itself become a protected trademark in each of the designated countries. Rather, once an applicant applies for seeking protection in member countries, each of the countries apply their own rules and laws to determine whether the protection may be granted to the mark. Thus, while an International Registration may be issued pursuant to the Protocol, it remains the right of each country to register the mark. It is only after the designated trademark office in a country grants protection that the mark gets the necessary protection in that country.

The Madrid system has not only eased the procedure of applying for the trademark but also simplified its subsequent management. For instance, it provides for recording subsequent changes to the mark and renewal of the mark through a single application.

The Protocol currently has 90 countries as parties, with the most recent being India, which became a member in April, 2013. Other prominent countries which have signed the Protocol are China, the European Union, France, Germany, United Kingdom and United States of America. The complete list of the Contracting Parties may be found online at the WIPO website.[1]

Procedure to be followed by applicants in India

India acceded to the Madrid Protocol on April 8, 2013 and became one of the 90 member countries of the Protocol. The Treaty will enter into force with respect to India on July 8, 2013.Even before India formally became a party, the Trademarks Act, 1999 had been amended by the Indian Parliament earlier in 2009 to give effect to Madrid Protocol. The Trade Marks Act (Amendment) Act, 2010 added a new chapter, Chapter IVA, which inserted special provisions relating to protection of trademarks through international registration.

Procedure for international registration of marks

An applicant who wishes to apply for an International Registration from India must first apply for trademark protection in the domestic trademark office like any domestic trademark registration (basic registration) as the international application is based on such basic mark.[2] Thereafter, he must make an international application to the National Office on Form MM2[3] prescribed by the Protocol. The application form may be filled out in English, Spanish or French. This form requires the applicant to specify in how many classes are grouped the goods or services covered by the mark, the countries in which protection is sought and other such details regarding colors, etc. The application form is subject to the payment of a certain fee which may be payable to WIPO directly or through the National Office which may charge an additional handling fee. The handling fee should be as specified in first schedule and shall be payable to the Registrar. It shall be paid in Indian Rupees electronically along with the application.[4] The fee that may be imposed in each application may be calculated on the WIPO website.[5] If the Registrar is satisfied that the application fulfills the prescribed substantive and form requirements, the domestic Office forwards the application to the International Bureau (IB) for registration.[6]

The Registrar’s Office is required to forward the application to the IB no later than two months from the date of receipt of the application by the Office.[7] This initial date is deemed to be the date of international registration too. The IB checks if application complies with the necessary requirements of the Protocol, form requirements under the Protocol Rules and other administrative requirements. If any irregularities are found, they are communicated to the Office of origin and the applicant.[8] Such defects must be removed within a period of three months, failing which the IB considers the application to be abandoned.

On being satisfied with the application, the IB records the mark filed before it, publishes it in the official Gazette and notifies the international registration to the relevant Offices of all the countries where the protection is sought, asking for their approval.

Any notice or communication relating to an International application and registration where India has been designated shall be communicated between the applicant and the Registrar in electronic form.[9] Similarly, if the International application originating from India or any other communication regarding the common regulations shall be filed electronically through the Trademark International Application System.[10]

The Offices of the designated countries then further examine the mark in accordance with their domestic procedure for a direct national application. If any grounds for refusal are found, they are communicated to the IB before the expiry of 18 months from the receipt of the notification. If no objections are expressed to the IB within this period, the mark is deemed to be registered in that country. An applicant who is refused a trademark in a country designated by him has been given appropriate remedies under the domestic laws of that country.

On completion of the aforementioned procedures, the designated countries send a statement to the IB notifying them whether the protection is granted, partially withdrawn or completely withdrawn, which is subsequently published in the Gazette by the latter. Accordingly, the mark is then deemed to be protected in all such countries which have agreed for the same.

On receiving an advice from International Bureau about an International registration designating India and notification about the extension of the protection shall be entered by the Registrar electronically in a record called “Record of particulars of International registration”[11]

Duration of protection and subsequent renewal

The protection granted by international registration extends for a period of 10 years. However, a trademark holder may further apply for a renewal of protection by filing an application in Form MM11[12]before the IB and paying the requisite fee. Upon receiving such application and payment of fee, the protection is extended by a period of another 10 years.

Independence of international registration

Applicants must also keep in mind that for the first five years from the date of international registration, if the initial basic national registration ceases to have effect as a result of the decision of the national Office, or a Court or voluntary cancellation, the international registration will also cease to have an effect.[13]However, if the trademark ceases to have effect after the first five years have passed, there is no effect on the international registration as it becomes independent of the basic registration after five years of operation.

Subsequent designations and changes to the mark

The holder of an international registration can expand the geographical scope of the protection of his mark by filing for a subsequent designation. In order to further protect the mark in more countries, an application in Form MM4[14] must be made before the IB, accompanied by adequate sum of fee, by the holder or by the domestic Office of the holder.

Similarly, the Protocol also allows a holder to record a change in ownership (Form MM5),[15] cancellation of protection[16] (Form MM8), appointment of a representative[17] (Form MM12), and provides for licensing of the trademark[18] (Form MM14).

Advantages of the Madrid Protocol

i.            The Madrid Protocol is more convenient and cost efficient as a candidate has to pay one fee and could get his trademark registered in many different countries.

ii.            The Madrid Protocol also gives wider protection as compared to the Madrid Agreement. There are 90 members of Madrid Protocol whereas the Madrid agreement, which is 110 years older, has only 56 members. All except three member states of the Madrid agreement are part of the Madrid Protocol.

iii.            The language used in Madrid agreement must be French, whereas Protocol Applications may be in French, English or Spanish (which is obviously an advantage in non-French speaking jurisdictions i.e. India).

iv.            The Madrid Protocol makes the whole process less time consuming. Generally, it takes years to get trademark registered in one or more states but procedures followed under Protocol makes it speedier and smoother.

v.            If basic trademark application is refused, it can be converted into national applications without losing the original filing date (although it is an expensive procedure).

vi.            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.

vii.            Under the Madrid Protocol it is pretty easy to add and subsequently designate the member country at a later date under the same International registration. The filing and maintenance fees associated with the international registration are lower over time than maintaining several separate national registrations.

Disadvantages of Madrid Protocol in Indian scenario

i.            The Indian Trademarks registry has not been able to entertain the national filings because of the lack of manpower. Now the work would be maximized due to the introduction of the Madrid Protocol and it would be very difficult task to look into both National and International filings at the same time and with same manpower.

ii.            The Indian Trademarks Registry will have to process the International applications in 18 months as prescribed in the Protocol and due to which the process of the National filings will be delayed.

iii.            The Indian Trademarks Registry allows broad specifications of goods and services which would not be possible in other states.

iv.            Assigning the ownership of an International registration to entities residing or having a connection with 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 and now it will have to file national applications to deal with these countries.

v.            If an Indian basic mark is cancelled or limited in first five years then the International mark will similarly be cancelled or limited. After the expiry of this five-year term, however, the international registration becomes independent.  The Indian Trademarks Registry has a huge number of trademark registrations and applications. More the applications more will be the chances of refusal. International applicants need to be very cautious before selecting any trademark and taking the route provided by the Protocol.

 

Conclusion

Thus, the Madrid Protocol has greatly helped individuals and business concerns that seek to register their marks in multiple countries in today’s age of increased cross-border trade. International registration offers several advantages for the owner of a mark. As discussed above, the owner is relieved of filing multiple applications having different requirements. Moreover, the applicant is not required to transact with the Offices of each individual country for confirmations, deadlines, etc. owing to the ‘one-stop-shop’ role played by International Bureau.  Thus, simply put, it provides speedy, cost-effective and wider protection to holders of a mark.


 

[1] For the complete list of parties, visit http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8.

[2]Trade Marks Act, 1999, § 36D (1).

[3] Form MM2 may be found at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2.pdf.

[4] Trade Marks Amendment Rules, 2013, § 67F.

[5] Fee may be calculated at http://www.wipo.int/madrid/en/fees/calculator.jsp.

[6]Supra note 1, § 36D (4).

[7]Madrid Protocol, art.3 (4).

[8] Common Regulations under Madrid Protocol, Rule 11.

[9] Trade Marks Amendment Rules, 2013, § 67C.

[10] Trade Marks Amendment Rules, 2013, § 67D.

[11] Trade Marks Amendment Rules, 2013, § 67G.

[12] Form MM11 may be found at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm11.pdf. See also supra note 6, Rules 29-31.

[13]Supra note 1, § 36E (8).

[14] Form MM4 may be found at http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm4.pdf.

[15] See

[16]Supra note 6, Rule 25.

[17]Id., Rule 25.

[18]Id., Rule 20bis.

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