Madrid System of International trademark registration in India – Who can use the Madrid system?

The application for securing international registration under the Madrid Protocol can be made by-

  • A citizen or legal entity of one of the protocol member countries; or
  • Who id domiciled in one of the Protocol member countries; or
  • Who has a real and effective industrial or commercial establishment in one of the protocol member countries which is mentioned in Article 2(1)(1).

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The term ‘real and effective industrial or commercial establishment is clarified to mean and to include “any establishment where some bona fide industrial or commercial activity takes place and need not necessarily be the principal place of business”. The facilities under the Madrid system are thus not available to a person or entity, not having the necessary connection, through industrial or commercial establishment, domicile or nationality or citizenship of a member country of the Madrid Protocol. Member countries may be grouped as – a) these governed exclusively by the Agreement, b) those governed by the agreement and the protocol. In case of a country which is governed by only the agreement only may be designated. Accordingly in these cases, international trademark applications will be governed exclusively by the agreement. In the case of a member country which is bound by the protocol only, as in the case of India, then only countries or organizations which are party to the protocol may be designated. The international applications will be governed exclusively by the protocol. Where the office of origin is a country which is bound both by agreement or protocol or both, the international applications will be governed by the protocol as regards contracting parties bound only by the protocol; and by the agreement as regards countries bound by the agreement, whether or not the latter countries are bound also by the protocol. Algeria is the only country which is party to the agreement only. It is to be noted, however, that the international registration under the protocol will not cover any country outside the Madrid System.

Main Features of the Madrid Protocol

It is a fundamental requirement that an application for international registration shall be founded on a “basic application” or a “basic registration” in the office of origin, as defined in article 2(2) of the protocol. Without this, the application is not qualified for international trademark registration. A ‘basic application’ in the Indian context means an application for registration of a trademark filed under section 18 and which is used as a basis for applying for an international trademark registration. Similarly, a basic registration means the registration of a trademark under section 23 and which is used as a basis for applying international trademark registration. Needless to say the international trademark registration to be sought for shall be for the same mark, and shall be in the respect of same goods or services and no wider than those given in the basic application or basic trademark registration. Where the international application complies with the requirements of the protocol, the mark is registered in the International Register and published in the Gazette of international Marks by WIPO. A certificate of registration will be sent to the holder by WIPO. A copy of the gazette publication will also be simultaneously sent by WIPO to those countries where protection of mark is requested. Registration of trademark in the international register implies that the protection of the mark in each of those countries expressly designated by the applicant in his international application is the same as if the mark had been deposited directly with the office of that contracting country. Each country will then examine the application in accordance with its own law and will notify WIPO whether or not protection will be granted in that country.

Time limit

India has a maximum time limit of 18 months within which refusal of protection is to be notified to the International Bureau of WIPO. Where any provisional refusal on the basis of official objections is made and is subsequently overcome through correspondence of hearing, the Registrar may cause such international registration to be advertised in the prescribed manner. In such cases, it will be necessary to inform WIPO before the expiry of 18 month period about the possibility of an opposition, followed by a provisional refusal soon after the receipt of any opposition to the protection of the mark. In such cases, the 18 months time limit does not apply.

Dependency of international registration

For 5 years from the date of registration, the international registration remains dependent on the basic registration, as the case may be, in the office of origin. In other words, if the basic application is refused or the basic registration is cancelled or ceases to have effect for any reason in the office of the origin, the international trademark registration will no longer be protected. If the ceasing effect of the basic application or basic registration is in respect of some only of the goods or services, the protection of international registration will also be restricted accordingly.

Renewal and post registration

The international registration can be maintained by renewals for successive periods of 10 years, on payment of the prescribed fees. After international registration of a trademark, any change in name, address or ownership of the mark or change by way of limitation in the specification of goods or services may be effected through a single procedure with the International Bureau and payment of one fee.

Differences between Agreement & protocol in the Madrid System

  • Under the protocol, an international application may be based on an application or registration in the office of origin. Under the Agreement it is possible to make an international application only based on a registration already secured in the office of origin.
  • Under the protocol, application may be filed in English, French or Spanish as prescribed by the office of origin – Rule 6. India has prescribed English under Rule 63 of the Trademarks Rules, 2017. Under Agreement, such option does not exist and application must be filed in French.
  • Under protocol, India has elected a period of 18 months (instead of 12 months as prescribed under the agreement) with a longer period in the case of opposition, within which to declare that protection cannot be granted to the mark in its territory. Such possibility does not exist under the agreement.
  • Higher fees may be levied under protocol than what is prescribed in the agreement.
  • Under protocol, an international registration which is cancelled, at the request of office of the origin, for example because the basic application has been refused or the basic registration has been invalidated within 5 years from the date of the international registration, may be transformed into national applications in the respective contracting parties in which the international trademark registration has effect, each benefiting from the date of the international registration and, where applicable, its priority date. This possibility does not exist under the Madrid Agreement.

Fees payable for international registration

Under Rule 34(2) of the Common Regulations, fees in connection with international trademark registration may be paid directly by the applicant to the International Bureau. Though the trademarks registry, India may allow an applicant to pay the fees through that office, it may opt to require the applicant to directly make the payment to the International Bureau in Swiss Frances, after duly notifying the Director General of that fact.

WIPO Gazette

The WIPO Gazette of International Marks is published by the International Bureau every week. It contains data with respect to new international trademark registrations, renewals, changes and other entries in respect of International trademark registrations. The WIPO publishes each year an index to the Gazette on CD-ROM indicating all the international registrations, with the names of the holders, in respect of which an entry was published in the Gazette during that year.

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