Madrid Protocol: International System for Registration of Trademarks

The Madrid Protocol came into force on April 1, 1996. India joined Madrid Protocol with effect from July 8, 2013. Applications using the Madrid System can now be filed from India.

The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland. The Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office.

Madrid Protocol provides for International Registration of Trade Marks and its objectives are as follows:

·         It facilitates the obtaining of protection for marks (trade marks and service marks) and from the date of international registration, the protection of the mark in each of the designated contracting parties is the same as if the mark had been the subject of an application for registration filed direct with the Office of that contracting party.

·          As international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier. As a result of International registration, there is only one registration to renew, and changes such as a change in ownership or in the name or address of the holder, or a limitation of the list of goods and services, can be recorded in the International Register through a single procedural step.

Advantages of the System:

·         After registering the mark, or filing an application for registration with the Office of origin, only one application needs to be filed in one language and one fee is to be paid instead of filing separate applications in the trade mark Offices of the various contracting parties in different languages and paying a separate fee in each Office.

·         The trademark holder does not have to wait for the Office of each contracting party in which protection is sought to take a positive decision to register the mark; if no refusal is notified by an Office within the applicable time limit, the mark is protected in the contracting party concerned.

·         Changes subsequent to registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services may be recorded with effect for several designated contracting parties through a single simple procedural step and the payment of a single fee. Moreover, there is only one expiry date and only one registration to renew

Benefits of the Protocol

·         Simplicity in filings

·         Flexible

·         Economical

·         Speed

·         Simplicity of maintenance

Provisions for International Registration under the Trademark Act, 1999

Pursuant to the Protocol, India has taken significant steps towards the alignment of its intellectual property regime with the global norms through the Trade Mark (Amendment) Bill, 2009 which has led to the inclusion of a new chapter (Chapter IV A) in the Trade Marks Act which exclusively deals with procedural and statutory requirements for international registration of marks

Sections 36A to 36G of the Trade Marks Act entail the provisions with respect to international registration of marks under the Madrid System. Under this provision, on receipt of notification from International Bureau with respect to a particular mark, the Registry will examine the mark under the provisions laid down under Sections 9, 21, 63 and 74 of the Act and thereafter accordingly issue necessary directives (advertise or refuse) the application and apprise the International Bureau with respect to the same within 18 months from the date on which it received the notification.

Guidelines for Functioning under the Madrid Protocol

The Controller General of Patents, Designs and Trademarks (CGPDTM), published guidelines under the Madrid Protocol.

The Guidelines inter alia provides for guidelines to be adhered to by Applicants while filing an international application with the Trademark Registry and also lays guidelines to be followed by foreign applicants while designating India in their International Application.

The Guidelines have been divided into two parts wherein PART A deals with the responsibilities of Indian Trade Marks Office as the Office of Origin detailing the fees, procedure and duration of filing thereto and PART B deals with the 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.

The Guidelines in detail can be accessed at https://ipindia.gov.in/form-and-fees-tm.htm

WIPO’s Notification on India’s Accession to the Madrid Protocol

·         In accordance with Article 5(2) (b) and (c) of the Protocol, this Contracting Party has declared that the time limit to notify a refusal of protection shall be 18 months and that, where a refusal of protection results from an opposition to the granting of protection, such refusal may be notified after the expiry of the 18-month time limit.

·         In accordance with Article 8(7)(a) of the Protocol, this Contracting Party has declared that, in connection with each request for territorial extension to it of the protection of an international registration and the renewal of any international registration, it wants to receive an individual fee, instead of a share in the revenue produced by the supplementary and complementary fee.

·         In accordance with Article 14(5) of the Protocol, this Contracting Party has declared that the protection resulting from any international registration effected under this Protocol before the date of entry into force of this Protocol with respect to it cannot be extended to it.