The Madrid Protocol is a treaty among UN member nations that simplifies trademark registration globally. Instead of registering trademarks separately in each country, the proprietor can file only one “international application” for the registration of trademarks. This application protects their trademarks in any nation that has agreed to the Protocol. The World Intellectual Property Organisation (WIPO) governs the Madrid Protocol by making trademark registration worldwide easy and cost-effective. The trademark proprietor benefits from this Protocol, allowing them to protect their trademark in various countries with a single application.
THE OBJECTIVE OF THE MADRID PROTOCOL:
The Madrid protocol’s main objective is to:
i) The Madrid Protocol allows trademark proprietors to apply for trademark protection in multiple countries by submitting just one application. Instead of going through the process of applying for a trademark separately in each country.
ii) The Madrid Protocol establishes a standardized process for trademark registration across all countries that are members of the Protocol.
iii) Madrid protocol simplifies the tasks such as renewing the trademark registration, updating proprietor information in case of changes, and modifying the list of products and services associated with the trademark. International Trademark Registration Process Under Madrid Protocol.
INTERNATIONAL TRADEMARK REGISTRATION PROCESS UNDER MADRID PROTOCOL:
The procedure for international trademark registration under the Madrid Protocol is as follows:
i) TRADEMARK SEARCH
Before filing for trademark registration, the applicant will need to do a trademark search, where they shall check the WIPO global brand database to see if any other trademark is similar to theirs. It is essential to check that no similar or identical trademark is already registered in Madrid protocol member nations. In case of a similar trademark, the application will be rejected.
ii) FILE REGISTRATION APPLICATION
After examination of the trademark search, the applicant shall submit an International registration application in Form MM2(E). This application must be filed at the office of the trademark registrar in India, for which Indian firms can start by filing in India. The trademark registrar will process and verify the application before sending it to the World Intellectual Property Organization (WIPO) in Geneva, along with the processing fee. Foreign trademark applications shall be submitted electronically via the official IP India website.
iii) EXAMINATION OF APPLICATION BY WIPO
The WIPO will review the trademark registration application after the Registrar of Trademark Office submits it. If the WIPO determines the suitable registration application, the trademark will be included in the International Register and published in the WIPO Gazette of International Trademarks.
iv) NOTIFICATION OF TRADEMARK REGISTRATION BY WIPO
After examination of the application by WIPO, if the application is qualified for Trademark registration, then the WIPO will notify each member nation of the Madrid Protocol regarding the International Trademark Application. Each member nation will review the application with their respective trademark laws and regulations. Within a period of 12 to 18 months of receiving the application, the member nations will provide their examination report to WIPO, indicating whether they accept or reject the application for trademark registration.
v) OPPOSITION TO TRADEMARK REGISTRATION
If any member nations object, the trademark registration application must be appropriately filed with the WIPO. The trademark applicant and the relevant Madrid Protocol member state will deal directly with the opposition to the trademark application. The response, appeal, hearing, and prosecution are the opposing procedures. The whole opposition process will involve the WIPO.
vi) GRANT OF INTERNATIONAL TRADEMARK REGISTRATION
Once the member countries accept the application, the trademark will be registered under the Madrid Protocol in the respective chosen countries for a period of ten years. Following approval of the registration application, the applicant will receive a statement of grant attesting to the international trademark registration of an Indian trademark.
INDIA’S ENTRY INTO THE MADRID PROTOCOL:
India ratified the Madrid Protocol in 2013, As a result, ratification eased the trademark registration process internationally. Previously, Indian-based brand owners have been going through costly and time-consuming procedures protecting their trademarks in multiple countries. However, they can now protect their trademarks in different countries using a single application in their own country through the Madrid Protocol. The Madrid System’s implementation in India falls under the Trade Marks Act of 1999 (amendment) based on the Madrid System, under the control of the Controller General of Patents, Designs, and Trademarks. The Madrid System review process is explicitly outlined, and the approved timeframe for assisting is implemented. Additionally, the CGPDTM has issued guidelines to ensure a standardized process for foreign applicants who include India in their International Application under the Madrid Protocol.
Amendments to Indian Trademarks Law
India modified its Trademarks Law to conform to the requirements of the Madrid Protocol. A new chapter (Chapter IVA) [1] of the Trade Marks Act 1999 was added by the Trade Marks (Amendment) Act, 2010, which outlined the legal and procedural prerequisites for international mark registration.
[1] Chapter IVA of the Act
AUTHOR:
M Shanthish Kumar, 5th year B.A, LL. B(Hons.), Veltech School of Law, Chennai