How Madrid System works – Madrid Filing in India
The Madrid Protocol is an International treaty that provides an efficient, cost-effective way for trademark owners, to ensure protection for their trademarks in as many as Ninety-five countries at one time. By just filling a single application, also it’s a lot easier to pay the official fee, because you pay them through one centralized window, rather than having to wire funds all around the world; if you are from a least developed country you will get a ninety percent reduction in your basic fee and the fee is calculated on a per country basis, through the World Intellectual Property Organization, also referred as WIPO.
The only requirement is that a person should have a registered trademark or pending application from his/her own country. The Madrid Protocol makes future Trademark management easy by providing a single system for renewal and ownership changes. The people have Ninety days from their application filing date to preserve that filing date overseas. They can still file anytime after that, but they lose the priority date of the Indian application. Once filed, the Madrid application (Madrid Filing) is first examined by the World Intellectual Property Right Organization. If there is no issue the mark will then be passed on to each country’s individual Trademark office. Each member nation may refuse a trademark on a number of grounds, including a potential conflict with existing local Trademarks, a lack of distinctiveness, or a perceived challenge to public morality. The member nation has up to Eighteen months to reject a trademark application, or to grant protection, which may be extended if an opposition is filed against the trademark application. It is always better that you will do the public search of your trademark prior so that your money will not be wasted.
If everything goes well, you will have your individual trademark registrations in all these countries. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.The international registration of your mark is valid for 10 years. You can renew the registration at the end of each 10-year period for indefinite time. The beauty of International application is you don’t need to deal with trademarking firms in each country to file your applications you don’t need to translate your trademark application to a million different languages the reason is that not every country recognizes chinese as an official language and if you file a direct application for instance in China then the application has to be filed in chinese but if you are a part of Madrid application (Madrid Filing in India) then your application can be in English or French or Spanish these three languages are the official languages and it can cover China if you want to. Registering a trademark in foreign markets gives a company the exclusive right to commercialize its products in those markets. This provides a basis to stop counterfeiters.
Registering a trademark abroad also provides the opportunity to license the trademark to others (often in conjunction with other IP rights) or may be the basis for a company’s franchising or merchandising strategy. 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. 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.
Madrid Protocol: Pros and Cons
As every country has its own system for registration of trademarks, Madrid Protocol been introduced to provide convenience in the system of registration of marks when sought in multiple jurisdiction. Madrid System functions under the Madrid Agreement and the Madrid Protocol and is administered by the International Bureau of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland.
The Madrid system allows the registration of trademarks in numerous jurisdictions of the world that are designated member countries of the Madrid System. The process starts by filing a single application with the applicant’s regional trademark office.
India joined the Madrid Protocol on 8 July 2013. The Madrid system not only simplifies the process of applying for a trademark, but also simplifies its subsequent management. Applicants can now get International Registration in India based on Basic Application or Basic Registration in the Protocol Member Country.
Process for International Registration under Madrid System
Stage 1: File an Application/ Register the trademark through Regional IP Office (Office of origin)
Before filing an international application, it is required to register or file an application, in the regional IP office. The registration or application is known as the basic mark. On submission of international application through regional IP Office on the basis of basic application, regional office will certify and forward it to WIPO.
Stage 2: Formal examination by WIPO
WIPO only conducts a formal examination of the international application. Once approved, the trademark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send a certificate of international registration and notify the IP Offices in all the territories where applicant wish to have the mark protected.
Stage 3: Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party).
The IP Offices of the territories where applicant want to protect trademark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify the applicant. If an IP Office refuses to protect the trademark, either in totally or partially, this decision will not affect the decisions of other IP Offices. The applicant can contest a refusal decision directly before the concerned IP Office in accordance with its legislation. If an IP Office accepts to protect the trademark, it will issue a statement of grant of protection.
The international registration of trademark is valid for 10 years. The applicant can renew the registration at the end of each ten year period directly with WIPO with effect in the designated Contracting Parties concerned.
Pros of filing trademark application in numerous jurisdictions through Madrid protocol in India are:
1. It has a centralized trademark application process through which an individual can achieve worldwide security through a single application.
2. It is opportune and cost-effective method.
3. Avoids the multiplicity of applications.
4. It is time effective.
5. Any change (e.g. name, address, etc.) in the right holder’s details can be changed by sending a single document to the International Bureau and no effort is required at each national office.
6. According to the Madrid protocol, it is very easy to add a member country under a single international registration at a later date. Filing and maintenance fees associated with international registrations may be lower over time than maintaining different national registrations.
As coin has two sides, along with several pros of filing trademark application in numerous jurisdictions through Madrid protocol in India, it also has downside. Some of cons for filing trademark application in numerous jurisdictions through Madrid protocol are as follows.
1. The international registration can extend only to member countries.
2. The international application is dependent on the basic application/registration, hence, if there is any change in the basic application or registration, these changes will inevitably apply to the international applications as well.
3. If a trademark mark is cancelled or restricted in the first five years in the regional office then the International mark will also be cancelled or limited. After the expiry of this five-year term, though, the international registration becomes independent.
4. 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/ system.
In the end, it may be concluded that though Madrid System provides an opportune, timely and cost-effective way of obtaining trademark protection but effective exploitation of this system will require greater administration and timely management of trademark applications owing to its stringent timelines.