Reason for amending the Madrid system by protocol:
Although the Madrid system has been intensively used by trademark owners of the member countries for more than a century now, the number of member countries has remained relatively low and has also remained geographically limited. Several states have considered a number of features of the Madrid protocol as obstacles to their accession to the same and have not joined the system.
The following are those five features:
- First and foremost step is to obtain the basic registration of the trademark at the national level in the country of the origin which is a prerequisite to international registration. In some countries, trademark examination takes a long time and trademark registration is not easily and rapidly obtained.
- Second step is that the designated office has to examine the mark within the constraint period of one year and issue a notice of refusal by giving all the grounds for refusal.
- The third thing is that the uniform fee paid for the designation of a country, some countries are getting high level of national fees but under the Madrid system such a country would receive the fees comparatively less than the national system.
- Fourth, the fact that the international trademark registration remains linked to the basic registration during five years and must be cancelled if the basic registration is cancelled operates as an obstacle. This is considered, in some countries, as being too strict since the grounds under which the mark is cancelled in the country of origin may not exist in each of the designated countries.
And fifthly, the regulations implementing the agreement provide for a single working language i.e., French.
Understanding the features of protocol:
Firstly the obligations and methods of the mechanism of the international registration of marks under the Madrid protocol are noted. Then the amendments in the 1999 act of India and how the system would operate for Indians applying for international registration of the marks are explained and how the Indian law would operate for these applicants who designate India as a country of protection.
Before the idea of a protocol to the Madrid agreement was launched, various attempts had been made to create a completely new system for the international registration of marks. All these attempts proved to be unsuccessful. In the meantime, the country-members of the European community had started work on the establishment of what is now called the Community of Trademark System (CTM).
The future existence of the European community trademark registration system was of direct concern to the system established by the Madrid agreement and protocol. The desirability of establishing links between the Madrid registration system and the future European community registration system was recognized in the 1980s.
It led to the setting up of a special committee titled working group on links between the Madrid agreement and the proposal community trademark. “The objectives of that committee developed and led to the establishment of a protocol relating to the Madrid agreement which was adopted in Madrid in 1989″.
In June 1989, the diplomatic conference for the conclusion of a protocol relating to the Madrid agreement concerning the international registration of marks, convened and organized by WIPO, was held in Madrid. The diplomatic conference unanimously adopted on 27 June, 1989, the protocol relating to the Madrid agreement concerning the international registration of trademarks. There are 90 members of the Madrid protocol as on 8 July, 2013 including India.
Objectives of protocol:
The objectives of the Madrid protocol are two-fold. First is to attract into the Madrid system, new member states, in particular those member states of the European community which are not yet party to the Madrid agreement as also countries like japan and the United States of America. And secondly, the Madrid protocol has the aim of creating links between the Madrid system and the community trademark system of the European community.
- Innovations introduced by the Madrid protocol.
- Major innovation been introduced by the Madrid protocol in the Madrid system.
International application is purely based on the regional or national application:
As per the Madrid agreement, the international application must be based on the national registration in the country of origin. This first innovation removes a decisive obstacle to accession to the system by several countries. The obstacle lies in the fact that obtaining of a national registration as prescribed by the agreement frequently takes much time, especially in countries that have a full examination system. The inconvenience in particular is that whenever the basic registration is obtained after six months from the date of filing of the national application, the right of priority of six months under the Paris convention is lost. This inconvenience has been removed by the Madrid protocol.
Dilution of deadline:
Whereas, under the Madrid agreement, any notification of refusal by the office of a designated country must be sent to the WIPO within a time limit of one year, the Madrid protocol, while keeping that deadline as the basic deadline, provides for exemption that are intended to allow accession to the protocol by the states which consider one year period as too short a time for their office to communicate even provisional refusals.
Under article 5(2)(b) of the protocol, any contracting party can make a declaration to the effect that the one-year time limit is replaced by 18 months; India has exercised the option of 18 months. Such declaration may also specify that, if a refusal results from an opposition to the granting of protection, the refusal may be notified by the office of that contracting party even after the expiry of the 18 months’ time limit.
Where a contracting party has made the latter declaration, the possibility for the office of such a contracting party of notifying a refusal after the expiry of the 18-month time limit, with respect to a given international registration, is subject to the fulfillment of the following conditions:
The office must, before the expiry of the 18-month time limit, inform the international bureau of the possibility that oppositions may be filed after the expiry of the 18-month time limit, and
The notification of the refusal based on an opposition must be made within a time-limit of not more than seven months from the date on which the opposition period begins; if the opposition period expires before this time limit of seven months, the notification must be made within a time limit of one month from the expiry of the opposition period.
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