Madrid Protocol an International System for Trademarks Registration
Madrid system is the international registration of marks in India. It was established under the Madrid agreement in 1891 and its protocol in 1989.This system offers the trademark owner protection of trademark in several countries. It can be done by simply filing an application with regional or national trademark office.
Madrid system enables the registration of trademarks in multiple jurisdictions worldwide. This system has not only eased the trademark application procedure but also simplified its subsequent management. Trademark can be protected and applicants can designate it in India.
Problems solved by Madrid System
Protection of trademark needs to be registered in the country where the protection it is required. By this trademark granted by a particular country served to protect the interest of the proprietor only in that country. Filing of for trademark registration was required to protect in an individual country where such protection was sought. Chaos like multiplicity of applications and inconvenience to the potential applicant and also increased the costs.
Requirement for an International trademark.
- Applicant should be Indian National or Indian domiciled and should have established and commercialized business in India.
- Applicant must have Indian trademark application. This application will be used as the International application. Goods and services mentioned in the list should be of an identical mark.
- One or more than one application should be chosen in the international application under Madrid protocol.
Benefits of the Protocol
- Less time-consuming process.
- Less cost and more effect in the system.
- Prevent from a multiplicity of applications.
- Protection through the single application worldwide and set of fees.
- Any language can be used whether it is a French, English or Spanish advantage to jurisdictions like India.
- By sending one single document to the bureau any change in the details of the right holder (Eg. name, address etc) can be done.
Filing international trademark in Madrid Protocol
Step 1: Basic application by applicant
Registration with the Indian Trademark or a pending application is the prerequisite for filing an application in India for Madrid Protocol. Trademark Office in India will then certify that the information in the international application. These are as the same as that in the basic application the date on which the international application was filed and forward the application to WIPO.
Step 2: Formal Examination for International registry.
A formal examination is conducted by WIPO to check if the application complies with the requirements of the Protocol and the other regulations. The same are notified to the applicant in case of any irregularities .The irregularities need to be remedied within three months failing which the application will be treated as abandoned.
When everything will be in order the application is recorded in the International register and published in WIPO Gazette. Certificate of International Registration will be sent to WIPO which will send and this will be notified in other trademark offices in the countries that the applicant has chosen to extend the protection of the mark. Trademark is still not been registered. In the substantial examination, the respective trademark will be checked in each country.
Step 3: Substantial examination by Contract parties
Substantial is the examination through which application passes at the trademark office of the contracting party same as passed directly. WIPO get notification of acceptance or refusal within the applicable time. The decision of the trademark office of the contracting party will then record the same in their records will notify. After acceptance of the application, a statement of the grant will be issued through which registration will be valid for a period of 10 years.
Disadvantages of the Protocol
- International Trademark Registration can extend only to Protocol territories.
- The international applications should be processed within 18 months. Otherwise, the national filings might get delayed.
- Trademarks registry in India has not been able to entertain the national filings due to lack of manpower. Since the Madrid system has been adopted, it would be even more difficult to look into both National and International filings at the same time with a number of people.
- Ownership assignment should be of an International registration to entities residing or having a connection with Non- Madrid Protocol state. This is prohibited under the rules of the Madrid Protocol and is not good for India because it has business interests with several non-member countries.