23 September, 2015
The Madrid system for the International Registration of marks allows registration of trademarks in multiple countries through a single international application. This system is governed by Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989)[i] (hereinafter Madrid Protocol), and is administered through the International Bureau of World Intellectual Property Office (WIPO). Though India is not a party to the Madrid Agreement, but after several years of negotiations with WIPO, it finally acceded to Madrid protocol on July 8, 2013.
In the span of two years, since India’s accession, there has not been much participation by Indian applicants in filing for trademark registration through Madrid Protocol. While foreign companies have been making the utmost use of this system, the same is not true for Indian entities. Recent data suggests that the number of international applications designating India is much higher than vice versa. Till June, 2015, approximately 13,666 international applications designating India have been received at the Trademarks Registry, India.[ii] This is in sharp contrast to the lowly figure of 200 Indian Companies who have taken the Madrid route.[iii] However, one needs to keep an optimistic attitude, keeping in mind that India has only recently joined the system and is still new to Madrid Protocol as well as its intricate workings.
The advantages of Madrid Protocol subsist in the convenience it affords to the applicants; it provides applicants with a tool to register their trademarks across several jurisdictions through a single international application thereby reducing the hassles that an applicant faces when registering a trademark in multiple countries through separate national applications. With the swipe of a single international application the applicant can obtain protection in multiple countries simultaneously. This coupled with it being economically viable also makes it a favorite among those seeking protection for their trademarks in multiple countries. Instead of paying individual fees for each national application, the applicant is required to pay only one set of fees, thus removing the severe strain that is associated with filing a single national application in each country in which protection is desired. Cost effectiveness is also appreciated at the time of renewals, assignments, and recordals of changes, which can be effected through the centralized system of WIPO as opposed to the tedious process of filing individually in each country. Moreover it provides applicants with the option to file their international applications in any of the following languages i.e. English, Spanish and French. In addition, this centralized mechanism enables the applicants to better manage its portfolio which is not possible in the case of individually filed national applications.
The application process begins with the filing of trademark application with the country of origin’s IP office. This mark is known as ‘Basic Mark’. Once the basic mark is applied for, the applicant is then required to present an international application through the IP Office of origin, which will certify and further forward it to International Bureau of WIPO. Upon receiving the international application, the same is formally checked by the Bureau and if approved, the mark is then recorded in the International Register as well as published in the WIPO Gazette of International Marks. The International Bureau then sends the international registration certificate to the applicant in addition to alerting the IP offices of the designated contracting parties wherein the applicant seeks protection for the mark. This is followed by the examination of the application by the IP offices of the designated contracting parties. The decisions of these IP offices are reported to International Bureau who will record the same in the International Register and then inform the applicant. In case the application is refused by one of the designated contracting parties, the refusal can be contested before the concerned IP office. Moreover the rejection of the application by one IP office does not stand in the way of the mark getting registrations in other countries. If the IP office of a designated contracting party accepts the concerned mark, it will issue a Statement of Grant of Protection.
Though the statistics have shown miniscule participation by Indians, the growing awareness about the protocol coupled with the dissemination of its advantages gives hope for an increased participation in the coming future, by Indian applicants seeking protection for their marks across multiple nations
[i] Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Available at: http://www.wipo.int/treaties/en/registration/madrid_protocol/ Last accessed Sept. 16, 2015
[ii] Press Release, Press Information Bureau, Government of India, Intellectual Property Initiatives to Drive “Make in India”, Ministry of Commerce & Industry, Dated July 13, 2015, Available at: http://pib.nic.in/newsite/PrintRelease.aspx?relid=123202.
[iii] India Inc yet to catch up with Madrid Protocol for registering its trademark internationally, Lubna Kably, THE Times of India, Aug. 22, 2015, Available at http://timesofindia.indiatimes.com/business/india-business/India-Inc-yet-to-catch-up-with-Madrid-Protocol-for-registering-its-trademark-internationally/articleshow/48602711.cms, Last accessed Sept. 16, 2015.
For further information, please contact:
Raashi Jain, LexOrbis
mail@lexorbis.com
