An Overview of Madrid Protocol in India

Madrid Protocol in India
Karan Singh
| Updated: May 14, 2021 | Category: Trademark

In 2013, Madrid Protocol was acquired by India. This protocol is a treaty administrated by the WIPO (World Intellectual Property Organization). To shorten or simplify the process of filing applications for International Trademark Registration across some jurisdictions, this protocol was introduced in India. In India, every area has a distinct system for the Registration of a Trademark. The Madrid Protocol in India was initiated to deliver a Trademark Registration system, which is suitable to all. Scroll down to know more about Madrid Protocol in India.

What is a Madrid Protocol?

Any individual who wishes to safeguard their Trademark must get their Trademark registered in the nation where he or she wants to safeguard it from being used illegally. Whenever a Trademark Registration is arranged by a specific country, the registration served to safeguard the owner’s interest in that country only. In the case where any individual who desires to safeguard their Trademark globally is needed to file an application for Trademark Registration in each country separately where such Trademark protection is required. Therefore, filing many applications created a lot of confusion and handiness to the Trademark owners or applicants. The cost of filling applications in several nations is also high for the applicant. The initiation of the Madrid Protocol in India is a single solution for all such problems concerning Trademark Registration.

This protocol is only for the International Trademark Registration. Trademark registration can be done by just making one application in which more than one nation can be covered. An outlook of filing an only application for the registration to cover a broad range of nations gives benefits, in terms of both portfolio administration and cost-saving, as opposed to a portfolio of some independent nation Trademark Registrations.

Some amendments were introduced in the Indian Trademark Laws to obey the Madrid System after India became a member of the Madrid Protocol. On September 21, 2010, the Trademark (Amendment) Act, 2010, was introduced to bring into action the system of Madrid Protocol in India. The modification in the Trademarks Act led to the addition of Chapter IVA containing Section 36A to Section 36G in the Trade Marks Act, 1999. This chapter of the Act focused on the Special Provisions concerning the Trademarks protection by International Trademark Registrations under the Madrid Protocol in India.

The Madrid Protocol allows the Trademark Registration in several jurisdictions generally that are part of the Madrid Union’s member nations. The Registration of a Trademark can be done by filing one application in the applicant’s Regional Trademark Office. The initiation of the Madrid Protocol in India assists in the hassle-free Trademark registration procedure and also made easy the successive management concerning the Trademark Registration. By delivering a basic application or registration in any member nation of Madrid Protocol, now any individual can designate Indian and get International Trademark Protection in India.

Nowadays, the use of the Madrid Protocol is an essential factor for any winning branding policy. This protocol provides the Trademark owner with an early presence of the brand at an international level. It assists the Trademark owner quickly in getting a global reputation and generating goodwill for their registered Trademarks worldwide. It also makes sure that the legal protection of the brand of the registered proprietor against a massive number of competitors in export markets. The other benefits available with this protocol are that it helps in an increase of privileging opportunities for the Trademark owner, the opening of partnership chances or opportunities’ and clarifies incorporation to international chains of supply. Generally, the Madrid Protocol offers the highest effective support to the branding policies and business success to the Trademark owner.

What are the Significant Advantages of the Madrid Protocol in India?

Following are some significant advantages of the Madrid Protocol:

  1. It has a unified process for Trademark application by which an individual can get protection globally by a single application of Trademark and a single set of fees;
  2. It prevents the municipality applications;
  3. The process of Trademark Registration is less time consuming;
  4. It is a more cost-effective and suitable method;
  5. The application for the protocol may be in Spanish, French, or English, which is clearly an advantage in non-French speaking nations such as India;
  6. Any alteration in the details of the actual Trademark owner can be altered by sending one document to the International Bureau[1], and no efforts have to be made at every national office;
  7. Under this protocol, it is effortless to add and subsequently designate the member nation at a late date in the same international registration. The filing and maintenance fees linked with the international registration are lesser over time than maintaining some separate national registrations.

What are the Significant Disadvantages of the Madrid Protocol in India?

  1. The international Trademark Registration can be extended only to Protocol Territories;
  2.  The application for international registration is dependent on the basis of registration or application; hence, there is any change in the basis of registration/application (such as cancellation), such changes will automatically apply to the international applications also;
  3. The Registry of Indian Trademarks has not been able to consider the national filing because of the lack of human resources. Now, India has adopted Madrid Protocol System; it would be harder to look into both International and National filings at the same time and with the same human resource;
  4. If an Indian mark is restricted or cancelled in the first five years, then the international mark will likewise be restricted or cancelled. After the expiry of five years but, the International Trademark Registration becomes independent;
  5. Under the Madrid Protocol, the applications of international registration have to be processed within eighteen months. Because of this, the national filing may get postponed;
  6. Assigning Trademark ownership of an international registration to companies occupying or having an association with a Non-Madrid Protocol state is prohibited under the Madrid Protocol Rules. This is not satisfactory for India because it has business interests with some non-member nations, and now it will have to file domestic applications to deal with such nations;

Requirements for filing an Application for International Trademark under the Madrid Protocol in India

The applications for International Trademark Registration can be filed in India under the Madrid Protocol. Such applications can be filed in India only when India is either the nation of origin or the designated nation in the application. In case India is the nation of origin, the Registry of Trademarks of India will receive the International Trademark applications from the applicant for International Trademark Registration in India. Apart from this, in case India being the designated nation in the application for International Trademark Registration, the application must be filed with WIPO or World Intellectual Property Organization, choosing the nation Indian as the designated nation.

Following are some basic requirements for filing an application of International Registration under the Madrid Protocol in India:

  • The applicant must be an Indian Resident;
  • An already existence Trademark application must be available with the applicant;
  • The applicant should be entitled to filing the application for International Registration;
  • There should be an identification  of more than one nation where the protection is needed should be provided in the application of International Registration application;
  • There must be a business place in the boundary of India.

Documents Required for International Trademark Registration under Madrid Protocol in India

Following are some vital documents required for International Trademark Registration under Madrid Protocol in India:

  • Submit the duly filled application form for the International Trademark Registration;
  • Submit the handling fee that should be paid with the application for international application;
  • In case the applicant is not the Trademark owner, then the Power of Attorney in favour of the individual who is an applicant of International Trademark Registration application must be attached  with the application of international registration;
  • The global designation fee should be paid with the application of International Registration. The prescribed fees should be paid in Swiss Francs and are payable to the World Intellectual Property Organisation (WIPO).

Procedure for International Registrations of a Trademark under Madrid Protocol in India

To expand the business to all nations under the Madrid Protocol, the Indian companies and entrepreneurs are now efficiently acquiring International Trademark Registrations. Such registrations can be procured by filing an application with any of the proposed Trademark Office in India. The procedure for getting the International Trademark Registration can be largely divided into three different stages, and you can check the same below:

Procedure for International Registrations
  • Filing of Application: The first step is to file an application for the International Trademark Registration, for that the presence of a formerly filed Trademark with the relevant regional Trademark Office of India is required. After getting an application for the registration, the national Indian Trademark Office will examine the contents of the international Trademark application with the help of the formerly registered or filed Trademark application specified in the new application for international application.

Once getting pleased with the absoluteness and appropriateness of the particular  Trademark for International and Indian Trademark Registrations under the Madrid Protocol, the Trademark Office of India must forward the application of the International Trademark Registration to the IB or International Bureau of WIPO (World Intellectual Property Organisation) located in Geneva, for additional processing of the application.

  • Examination and Approval of Application: After getting the application for International Trademark Registration from the Regional Trademark Office in India, the IB or International Bureau of WIPO will inspect the vital requirements and appropriateness for the International Trademark Registration of the application. In the case of the suitability of the international Trademark application, the IB will record the application in the International Register. Once the application for International Registration is recorded in the International Register, the application will be published in the WIPO Gazette of International Trademarks. During the publication of the International Trademark Application in the gazette, a notification concerning the international Trademark application should be sent to the designated contracting nations by the applicant of the application.

In the case of any fault in the International Trademark application, the applicant of this registration will be rapidly informed regarding such faults. A time of three months is given to the applicant for fulfilling the International Bureau with their remedies. The proposed nations in the international application are requested to a critical and thorough examination of the application of the International Registration as per the Trademark Rules and Regulations of the proposed countries. The proposed countries should submit their examination report to the IB of the WIPO within 12-18 months.

  • Inspection and Approval of the Trademark Office of each Designated Country: This is the final stage, the application for International Trademark Registration will pass through significant and considerable examination at the Trademark Offices of each proposed nation in the application; as if the international Trademark application was filed directly with the suitable Trademark Office for International Trademark Registration. After the examination, the proposed nations in the international application will then notify the respective acceptance or refusal of the Trademark application to the WIPO or World Intellectual Property Organisation within the definite time of 12-18 months.

In case all the proposed nations accepted the application, then the application for International Trademark will be registered under the Madrid protocol for a period of ten years. After the acceptance, a statement of the grant will be issued to the applicant. In case the application for the registration is refused by the designated nation, the succeeding procedures concerning the refusal of the international Trademark application will be conducted directly between the applicant and the concerned member nation of the Madrid Protocol. The rejection procedures consist of appeal, response, hearing, and prosecution. In the complete rejection procedures, the involvement of the WIPO should not be there.

Conclusion

The Madrid Protocol delivers an eye-catching route to safeguard the brand in different nations around the globe. This protocol also assists by making user-friendly and cost-effective procedures for obtaining and managing the Trademark Registration right abroad. Any individual being a national of India, or having domicile of India or having an organization in India, he or she is allowed to use the system of Madrid Protocol that India joined in 2013. The application for the International Trademark must be filed by the applicant for safeguarding their Trademark in India as well as overseas.  The process of registration under the Madrid Protocol in India is time-consuming and lifelong. It is recommended to take help from an expert who will help you to complete the registration process.

Spread the love
Karan Singh

A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.

docsbizkit
 

Related Articles

Current Scenario of Trademark Registration for Online Business - An Overview
| Date: Jul 06, 2021 | Category: Trademark

Current Scenario of Trademark Registration for Online Business – An Overview

In India, online businesses are seeing rapid growth in the current scenarios. With more & more businesses are entering the online environment, brand protection has become a severe matter of...

Read More
Cost of Trademark Registration - An Overview
| Date: Jul 05, 2021 | Category: Trademark

Cost of Trademark Registration – An Overview

Trademark is a part of IPR (Intellectual Property Right) which intends to safeguard the owner of the products and services from infringement. It comprises a name, word, or sign which...

Read More
Class for Trademark Registration
| Date: Jun 04, 2021 | Category: Trademark

Recognise Your Suitable Class for Trademark Registration

Trademark is a distinct or unique identification of products or services of a company, articulated by graphical representation, smell, a combination of colour, taste, text, or even by game giving...

Read More

ARTICLES

Hi! My name is Akanksha! Let's talk.