Madrid protocol – The International Trademark System

Trademark – The strongest Asset

Brand is the image that differentiates you from your competitors. It plays a crucial role in your marketing strategy and is at the core of your business competitiveness. The legal expression of brand is a TRADE MARK. Branding aims at building a distinctive and attractive presence in the market that helps gain and retain loyal customers. It may become your strongest asset. A trade mark confers on you the exclusive right to prevent third parties from using the signs that distinguish your brand in the course of trade for identical or similar goods or services.

• Trademark should not the same as or similar to a well-known mark or a trade mark already registered by someone else for the same goods or services.

Exclusions: State flags, State emblems and names and emblems of intergovernmental organizations are excluded from protection as trade marks in most countries around the world.

Advent of “Madrid protocol – A Route to Global Branding”

• Protecting your brand outside India implies acquiring trade mark rights in each of the export markets where you wish to commercialize your products or services.
• Trade mark rights are territorial in nature and are only valid within the territory of a country or a group of countries having established a regional trade mark system.
• To acquire trade mark rights abroad you need to file separate trade mark applications at the trademark offices of the countries where you wish to have your brand protected.
• Being an Indian national or a person domiciled in India we may take advantage of an alternative, more attractive, cost-effective and user-friendly route to acquire and manage your trade mark rights abroad by making use of the Madrid Protocol, an international treaty that India joined in 2013.

What is Madrid Protocol?

• “Madrid Protocol” means the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on the 27th day of June, 1989, as amended from time to time
• The Madrid Protocol gives trade mark owners the possibility of having their trademarks protected in several countries by simply filing one application directly with their own national or regional trade mark office.
• It is a one stop solution to protect your brand in many countries around the world, following a simple and cost-effective procedure for filing your trade mark applications and managing your trade mark registrations abroad.
• The Madrid Union currently has 100 members, including both States and intergovernmental organisations that are Contracting Parties to the Madrid Protocol, covering the territories of 116 countries.
• Most of India’s top trading partners are members of the Madrid Union.
• The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO), which is a specialized agency of the United Nations, headquartered in Geneva, Switzerland.
• The Madrid Protocol allows obtaining and maintaining protection for your brand around the world by providing a user friendly, expeditious and cost-effective set of procedures for the central filing of trade mark applications and the central management of trade mark registrations with effects in various countries.

Filing of International Application for Trademark:

• After obtaining the Indian trade mark we can file an international application, online, at the IP India designating all or some of the members of the Madrid Union where you wish your mark to be protected.
• The application is transmitted to WIPO for examination, registration and publication.
• The particulars of the international registration are notified by WIPO to each of the designated Members of the Madrid Union.
• The Madrid Union members have to decide within very strict time limits whether they can grant protection to your mark in their territories.
• In case, any designated member does not communicate any objection within a period of 18 months from the date of notification of the international registration to it, the mark, is deemed to be protected within the territory of that member, as if the same has been registered directly with the IP office of that member.
• If international application conforms to the applicable requirements, WIPO will register trademark 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.

Procedure for Filing International Application:

• Select your trade mark for protection abroad, The Trade Marks Registry under the office of the Controller General of Patents designs and Trade Marks (CGPDTM) deals with international applications originating from India
• Basic requirement for filing International Application is

a) A Natural person or legal entity domiciled in India

b) Real and effective industrial or commercial establishment in India

c) A “basic mark” in India, which means that your mark has already been registered or applied for protection in India at the India Trade Marks Registry.

• Online E-Filing an international application under the Madrid Protocol is done electronically at the IP India website by filing a Special Form [MM2(E)] available at IAOI (International application originating from India link at comprehensive e-filing services gateway which is made available on this link -https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx
• Registration with IP India needs to be done first for which we need to :

a) procure a class III/II DSC from Indian Certifying Authorities

b) Download and install the Signing Component as per the instructions given in the CGPDTM Digital Signature Manual

• Content of International Application are segmented into two types Mandatory and optional

The mandatory contents are as follows:

i) The Applicants name and address;

(ii) The reproduction of your mark, which must be identical to your basic mark in India;

(iii) A list of the goods and services for which protection is sought, which must be fully covered by those indicated in your basic mark; and

(iv) A list of members of the Madrid Union in which protection for the mark is sought (designated Contracting Parties).

The optional contents are as follows:

(i) An indication of your entitlement to file (establishment or domicile in India or Indian nationality);

(ii) Trade mark priority claim, if applicable;

(iii) Name and address of representative, if appointed;

(iv) Number and date of your basic mark at the India Trade Marks Registry;

(v) Indications of the mark (kind of mark, colour claim if applicable);

(vi) Description of the mark, if required;

(vii) Transliteration of the mark, if applicable;

(viii) Amount of the fees being paid and method of payment.

The international application may also contain (optional content)

(i) an indication of your nationality or, if you are legal entity, your legal nature and the State under the law of which you have been established as a legal entity;

(ii) A translation of the mark;

(iii) an indication in words of the principal parts of the mark which are in colour, when colour is claimed; and

(iv) A disclaimer.

• When filing an international trade mark application, we must correctly indicate the goods and services for which trade mark protection is sought, The IP India website (http://www.ipindia.gov.in/trade-marks.htm), under “Quick Information” on trade mark classification, offers you access to an online search and classification tool
• In your international application, we must designate all the Madrid Union members (Madrid Protocol Contracting Parties) where we wish the trade mark to be protected. By simply checking the box next to each member’s name in the application form (MM2) you can designate any Madrid Union member except India.
• International application must be accompanied by the payment to WIPO of a set of fees (in Swiss francs) which include :

a) A basic fee of 653 Swiss francs – if no reproduction of your mark is in colour

b) or 903 Swiss francs, if any reproduction of your mark is in colour;

c) A complementary fee of 100 Swiss francs for each designated Contracting Party not having fixed individual fees

d) A supplementary fee of 100 Swiss francs for each class of goods and services beyond three classes, except if you only designate Contracting Parties having fixed individual fees

• To facilitate the calculation of the fees to be paid for your international application, WIPO offers a very practical online tool known as Fee Calculator, that you can access at the following address:

http://www.wipo.int/madrid/en/fees/calculator.jsp

• Regarding payment methods, you may pay your fees to WIPO either by:

(i) Credit card;

(ii) WIPO current account; or

(iii) Bank transfer.

Objection on International Registration of Trademarks

The Madrid Protocol has set strict time limits i.e, 18 months for objections to be raised by the designated offices.

Any objection that is raised by Madrid union member to registration of the trademark must be made to the International Bureau in in the prescribed format.

Any procedure subsequent to the refusal, such as review, appeal or response to an opposition, is carried out directly between the holder and the Office concerned, without any involvement on the part of the International Bureau.

Once all the procedures before that Office have been completed, the Office must send to the International Bureau a final statement. Depending upon the outcome of the case, such statement will confirm either that protection for the mark has been totally refused (Confirmation of Total Provisional Refusal), or that protection has been partially or totally granted to the mark, as the case may be (Statement of Grant of Protection Following a Provisional Refusal).

This statement is recorded in the International Register, published in the Gazette and a copy is transmitted to the holder of the International Registration.

Renewal period for the trademarks filed under Madrid Protocol

The international registration of trademark is valid for 10 years. The renewal for registration has to be done at the end of each 10-year period directly with WIPO with effect in the designated Contracting Parties concerned.

In this regard renewal request may also be sent to WIPO in writing or by using the form MM11.

Advantages of Madrid Protocol:

Centralized filing of trademark under the Madrid Protocol offers many advantages:

• There is no need to file separate applications in many countries and follow different procedures in each of those countries. Instead, we can file a single international application online on the IP India website.
• The procedure for filing is very simple, user-friendly, expeditious and cost effective
• We can make savings in translation costs and various types of fees, the Applicant need not file separate applications in many countries which are drafted in different languages or pay fees in different currencies or rather hire the services of local representatives and follow different procedures in each of those countries. Instead, they can file a single international application online on the IP India website, in a single language (English), for which they have to pay fees in a single currency (Swiss francs), and the application has effects in all the Madrid Union members
• Cost savings that result from using the Madrid system are particularly significant for small and medium-sized companies (SMEs).
• The Protocol offers early brand presence abroad, as it is a means to acquire rapid international reputation and generate goodwill for the trademarks.

Conclusion:

• Madrid Protocol is an umbrella like protection for Indian Trademarks.
• In today’s scenario Madrid Protocol is an essential component of any successful branding strategy
• The Protocol offers you early brand presence at a global level and helps you rapidly acquire international reputation and generate goodwill for your trademarks abroad.
• Protocol ensures the legal protection of your brand against competitors in export markets, increases franchising opportunities, opens partnership possibilities and facilitates integration to global supply chains.

Author: Monica Thakur is Associate Company Secretary with M&K Associates and can be reached at [email protected]

Disclaimer: The views, information or opinions expressed herein are compiled by the Legal team of M&K Associates, Company Secretaries, Hyderabad. The above information is solely for disseminating knowledge and private circulation. We are hereby not liable for any loss, damage or inconvenience caused as a result of reliance on such information and we accept no legal liability or other responsibility by or on behalf of any errors, omissions, or statements on this content.