Overview
In this era of Global Digitization every entrepreneur has the dream to take his brand to global market. The today’s era entrepreneur does not want to understand the Geographical barriers of the business and want to sail their business Global and the internet evolution has break all the geographical barriers and made the Business go global. With this business going global and to establish their name as a brand in the market it is important to safeguard the Trade Names of the Brand for the Growth of the Organization. Each country has their different laws for the protection of intellectual property rights due to this it becomes a challenging task for the Business owners to get there trade names registered in each county. To ease this process an initiative was taken by WIPO in the form of Madrid Protocol.
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Madrid Protocol
Madrid Protocol is an international System for registration of Trademarks in multiple jurisdictions around the world. This system of registration of trademark internationally is based on multilateral treaty consisting of Madrid Agreement Concerning the International Registration of Mark of 1891, as well as the Protocol Relating to the Madrid Agreement (1989).
The Madrid protocol does not give a single registration of trademark rather it helps to registers the trademark in different jurisdiction by way of a single application. Currently there are 90 countries part of Madrid System. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
Who All can Apply under the Madrid Protocol?
Not everyone is allowed to make application under the Madrid System. Only Person who is domicile or have any industrial/commercial establishment in, or be a citizen of the 124 countries covered by the Madrid System are allowed to make application under the System.
To check the eligibility WIPO has provided a tool known as “International Application Simulator”. The simulator is designed to show you how to use the Madrid System to seek the protection of your mark abroad. At the end of the simulation, it will also help you estimate the cost of registering your mark through the Madrid System, a simple, easy and cost-effective international registration procedure.
Link for Stimulation: https://www.wipo.int/madrid/en/madrid_simulator/
How to Apply under the Madrid Protocol?
For filing International application for trademark you must have already registered or applied for a mark in your “Home” IP Office. You must submit your international application through Office of origin of Applicant.
Let us take an Example, if you are a national of, or have a business in India, your connection will be with India (a member of the Madrid System) and you must file your international application through Indian Intellectual Property (IP) Office.
If you have a connection with several members (for example, you may be a national of India living in the United States of America), you can choose any one of these members to file your international application.
To file an international application, Form MM2 (available in English, French and Spanish) must be used.
It is worthy to be noted that all international applications designating the United States of America must also include Form MM18 (Declaration of intention to use the mark).
“Madrid Application Assistant” is a tool provided for ease of filing International Applications of Trademark. The Madrid Application Assistant records all the information required to complete an international application in an intuitive and linear manner. Once completed, the international application will be made available in a PDF format ready for you to submit to the Office of origin for certification. This not only saves time and effort, but also reduces the risk of irregularities, thus making the process of filing an international application more efficient and accurate.
Link for Application Assistance: https://www.wipo.int/madrid/application-assistant/
There is also an alternative way of filing international application by Madrid e-Filing. It is developed by WIPO with the needs of intellectual property (IP) offices in mind, Madrid e-Filing is Madrid System’s online interface for international applications. This service includes two distinct modules:
- An applicant filing module (replacing the MM2 Form)
- A customizable “Office of origin” module for IP offices.
Using Madrid e-Filing, the applicant can easily retrieve essential basic mark information, including the list of goods and services, directly from the IP Office’s national registry. Subsequently, Madrid e-Filing populates this basic mark information throughout the application for international registration.
It is important to note that the Madrid e-Filing service is a paperless, online filing and communication service. All communications, relating to an application for international registration, are transmitted to the applicant and to the IP Office in the Madrid e-Filing platform. In particular, users receive and respond to irregularity notifications. In turn, IP Offices monitor and transmit responses back to WIPO. This is all done easily, electronically and securely in Madrid e-Filing.
WIPO recommends using the Madrid Application Assistant to complete international applications where online filing is not made available by the Office of origin.
Link for Madrid E-filing: https://ipportal.wipo.int/
Goods and Service Classification
The Classification of the Goods and service shall be in Accordance with the latest International Classification of Goods and Service i.e. Nice Classification.
Nice Classification was setup by way of Nice Agreement, 1957 as an international classification of goods and services applied for registration of mark. Nice Classification is revised once a year and new version of each edition is published annually and enters into force on January 1st of every year.
There are in total 45 Classes. Class 1-34 are for the Goods and Class 35-45 are for Services.
To search under which Class the Goods and Service fall visit the Nice class search page on the WIPO e-filing website.
Lin for Class Search: https://www.wipo.int/classifications/nice/nclpub/en/fr/
Fees and payment
The Fees for the Application is comprised of 3 Parts:
- The basic fee;
- A complementary fee for each Contracting Party designated; and
- A supplementary fee for each class of goods and services in excess of three.
Before filing of application use the Fees Calculator to estimate the amount of fees payable.
Link for Fees Calculator: https://madrid.wipo.int/feecalcapp/
All fees must be paid in Swiss francs.
If your Office of origin is in a Least Developed Country (LDC), in accordance with the list established by the United Nations, you benefit from a 90 percent reduction in the basic fee for your international application.(India is not a LDC)
In general, all international trademark registration fees should be submitted to WIPO. However, for certain Contracting Parties, you may submit application fees directly to the Office of Origin; the Office will then forward the fees to WIPO.
There are 4 ways of payment provided by WIPO
- Current Account at WIPO
- Credit Card Payment
- Bank Transfer
- Postal Transfer
Bank Details
Account name: WIPO / OMPI
Credit Suisse, CH-1211 Geneva 70
IBAN: CH51 0483 5048 7080 8100 0
Swift: CRESCHZZ80A
How to Track the Status of Application
We can Track the international application status of documents being processed by WIPO by way of Madrid Monitor. Simply select “realtime search” in the left-hand column, then indicate your basic application or registration number.
Registration Certificate
If your international application conforms to the applicable requirements, WIPO will register your mark in the International Register, will publish the international registration in the WIPO Gazette of International Marks, and will notify it to the Offices of the designated Contracting Parties (DCPs). It will also inform the India TM Registry and send you an international registration certificate.
From the date of your international registration, your mark will enjoy the same protection in each of the designated Contracting Parties (DCPs) as if your mark had been filed or applied for directly in that DCP.
To ensure that after a period of ten years from registration your mark continues to be protected for an additional period of 10 years in those territories where you so wish, you simply need to renew your IR by paying the necessary fees to WIPO.
Scope for Company Secretary in Madrid Protocol
As a Practicing Company Secretary International Intellectual Property Rights is an emerging field to Practice into. There is an enormous market which is untapped by any other profession and we can take a first movers advantage and take our practice Global. We can act as consultants or advisors for Business housed who are planning to go International and make their brand name in the Global Market.
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