International Trademark Registration in India by Madrid Protocol

The Madrid Protocol, an international treaty designed for the registration of trademarks, has been embraced by numerous companies across the globe, including India. Its implementation in India has created an accessible pathway for brand owners who seek to protect their trademarks internationally. The Madrid Protocol, governed by the World Intellectual Property Organization (WIPO), is an international system for the registration of trademarks. It allows a trademark holder to seek protection in multiple member countries through a single application filed with their national or regional trademark office.

The primary objective of the Madrid Protocol is to facilitate easy and efficient protection for marks. From the date of international registration, the protection of the mark in each of the designated contracting parties is equivalent to the mark being registered directly with the office of that contracting party.

Understanding the Madrid Protocol

The Madrid Protocol, adopted in 1989, is a significant international treaty that facilitates the international registration of trademarks. It offers an efficient, cost-effective solution for registering and managing trademarks worldwide via a single application.

This system is administered by the World Intellectual Property Organization (WIPO) and allows trademark owners to protect their marks in multiple jurisdictions by simplifying the application process.

This Protocol has been immensely beneficial to brand owners seeking to expand their businesses globally. It enables them to secure protection for their trademarks in various member countries by submitting a single application in their national or regional trademark office.

The Objectives of the Madrid Protocol

The Madrid Protocol aims to streamline the process of international trademark registration and management. Here are some of its primary objectives:

• Facilitate the acquisition of trademark protection in multiple countries through a single application.
• Provide a uniform and consistent approach to the registration process of trademark across all member countries.
• Simplify the subsequent management of the trademark, including renewal of trademark, ownership changes, and updates to the goods and services list.

Why Adopt the Madrid Protocol?

The Madrid Protocol offers significant advantages to businesses looking to protect their trademarks internationally. These benefits are primarily due to the system’s centralized application process, making it more convenient and cost-effective:

• The process requires only one application in a single language (English, French, or Spanish), reducing the complexity and language barriers often associated with international trademark registration.
• The system is time-efficient, as there’s no need to wait for each designated country’s trademark office to approve the application. If no refusal is notified within 18 months, the mark is considered protected in the respective country.
• Any subsequent changes to the registration details, like a change in ownership or the name or address of the holder, can be recorded through a single procedural step, further simplifying the management of the protection.
• The filing and maintenance fees associated with international registration are lower over time than maintaining separate national registrations.

India’s Entry into the Madrid Protocol

India joined the Madrid Protocol in 2013, marking a significant milestone in the country’s intellectual property (IP) environment. The system was introduced to simplify the process of filing international trademark applications across various jurisdictions.

Before India’s accession to the Madrid Protocol, Indian brand owners had to file separate applications in each country, making the process time consuming and expensive. With India’s entry into the Madrid Protocol, Indian business owners can now protect their trademarks in multiple countries through a single application filed in India. 

Sections 36A to 36G of the Trade Marks Act, 1999 entail provisions for international registration under the Madrid System. Upon receiving a notification from the International Bureau regarding a mark, the Registry examines the mark under the Act’s provisions and issues necessary directives within 18 months.

The Controller General of Patents, Designs, and Trademarks (CGPDTM) has published guidelines for functioning under the Madrid Protocol. These guidelines provide a checklist for applicants when filing an international application with the Trade Mark Registry and standard protocol for foreign applicants designating India in their International Application.

Amendments to Indian Trademarks Law

To comply with the Madrid Protocol’s provisions, India made necessary amendments to its Trademarks Law. The Trade Marks (Amendment) Act, 2010, introduced a new chapter (Chapter IVA) in the Trade Marks Act 1999, outlining the procedural and statutory requirements for international registration of marks.

The International Registration Process under the Madrid Protocol

The international registration process under the Madrid Protocol involves several stages, from filing a trademark application form to renewing the registration. An individual or a company can file an international trademark application under the Madrid system if they meet certain conditions. These include being a national of India, having a real and effective industrial or commercial establishment in India, and owning a “basic mark” in India.

The “basic mark” refers to a mark that has already been registered or applied for protection in India at the India Trade Marks Registry.

Examination by WIPO and Designated Contracting Parties

Once the international application is filed, it undergoes a formal examination by WIPO. If there are no irregularities, or they have been corrected within the prescribed time frame, the application is entered into the international register.

Following this, the application undergoes a substantive examination in each designated contracting party. If no refusal is notified by an Office within a specified timeframe, the mark is deemed to be protected by the contracting party concerned.

Advantages and Disadvantages of the Madrid Protocol in India

The Madrid Protocol brings several advantages to Indian businesses. It simplifies the international trademark registration process, reduces costs, and prevents the multiplication of applications. Moreover, it allows for easier management of trademark protection, with only one registration to renew and changes recorded through a single procedural step.

However, the Madrid Protocol also has a few drawbacks. The international application is dependent on the “basic” application or registration in India. If there are any changes in the “basic” application or registration, these changes will automatically apply to the international applications.

Despite these challenges, the Madrid Protocol provides a convenient and cost-effective way of obtaining international trademark protection. Its effective utilization in India will require a strong administration and timely management of trademark applications due to its stringent timelines. 

The Road Ahead

While the Madrid Protocol provides a simplified process for international trademark registration, it requires careful administration and timely management due to its strict timelines. Businesses must be aware of the rules and regulations and ensure adherence to derive the maximum benefits from the system.

The Madrid Protocol is an evidence to the evolving global business landscape, with countries like India recognizing the need for alignment with international intellectual property norms. As more countries join the Madrid system, it will continue to serve as a significant enabler for businesses seeking to establish and protect their brand identity on a global scale.