Madrid Protocol for International Trademark Registration

Introduction

                   A unified process for trademark registration in several contractual member countries is offered by the Madrid system. Two accords or treaties control the Madrid system:
1. The Madrid Agreement
It relates to the worldwide registration of trademarks and
2. The Madrid  Protocol
Concerning the Madrid Agreement (sometimes referred to as the Madrid Protocol for short). adopted it in 1989 Madrid, Spain.
The World Intellectual Property Organization (WIPO) in Geneva, Switzerland looks after the administration of these accords through the International Bureau (IB).

                      We will be discussing The Madrid Protocol in this blog majorly.Traditionally, the trademarks registered in a particular Nation or granted by a particular Nation served to protect the interest and rights of the proprietor only in that particular nation. Any person interested in protecting his or her trademark internationally was thus required to file for trademark registration in each separate nation where such protection was sought. This  caused multiplicity of applications and inconvenience to the applicant and more expenditure for him. This inconvenience of filing trademark in each separate nation was sought to be redressed by the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 1989 (Madrid Protocol).

Registration of trademark internationally under Madrid Protocol

Madrid Protocol enables the trademark owners to have their trademarks protected in any of the nations that are signatory to  the Madrid Protocol by filing a single application, called an ‘international application’. 

An international trademark so registered is treated at par with a domestically registered mark in nations designated by the applicant and will have the same importance as that of a trademark registered in that nation domestically . 

Thus, the protocol provides a cost-effective way for individuals and business concerns to ensure protection of their marks in multiple nations by filing a single application, in a single language (English, French or Spanish), at a single office (International Bureau of WIPO, Geneva), with a single set of fees, in a single currency (Swiss Francs).

Important note :  It is important to note that the Madrid Protocol only provides for international registration and does not provide for an ‘internationally effective’ or ‘internationally enforceable’ trademark. Thus, a mark that is filed for an international registration under Madrid Protocol does not automatically become a protected trademark in each of the signatories or the nations specified by the proprietor of the trade mark.

 Rather, once an applicant applies for seeking protection in member Nations, each of the Nations apply their own rules and laws to determine whether the protection may be granted to the mark or not. Thus, while an International Registration may be granted by  the Protocol, still it is with the particular nation to grant  the trade mark protection in it’s nation or not. It is only after the designated trademark office in a Nation grants protection that the mark gets the necessary protection in that Nation.

Procedure to be followed by Indian Applicants to register their trademark internationally

1.  Apply for trademark registration at the domestic trademark office i.e to the registrar of trademarks if the trademark is not yet registered domestically. On the basis of the national registration,international registration of that trademark will be done

2. Trademark search:

 The applicant should do a thorough search to see if there is any existence of the same trademark. The search can be done in WIPO’s Global Brand Database. If it turns out that there is an already existing trademark , the international registration application will be rejected

3. Format of the application:

Now, the applicant should file the international trademark registration application through the Form MM2(E) with the office of Registrar of Trademarks in India, this office will be called the office of  origin. The processing  and verification of  the application will be done by the Registrar of Trademarks. The trademark will be filed with the World Intellectual Property Organization (WIPO) in Geneva by the Registrar of Trademarks following verification. The foreign trademark application must be submitted electronically via the official IP India website, along with payment of the handling fee. 

Few prerequisites are

The applicant should apply for  international application for the same trademark which has been granted trademark domestically

The list of services and goods mentioned in the international application should be the same as that of national trademark registration or application.The applicant should choose one or more Madrid Protocol member Nations where he/she wants protection in the international application, it is upto the applicant.

4. WIPO’s review/examination of the international application:

            Upon receipt of the application from the domestic Registrar of Trademarks office, the WIPO will review it. The trademark is registered in the International Register and published in the WIPO Gazette of International Trademarks after the WIPO determines that the registration application is suitable.

5.Notification from WIPO Regarding Trademark Registration:

If the applicant chooses to achieve registration, each signatory country to the Madrid Protocol will get a notification from the WIPO regarding the worldwide trademark application.The member countries will assess the application for international registration in compliance with trademark rules and regulations. The member countries will submit their examination report and notify the WIPO of their acceptance or rejection of the application for trademark registration within 12 to 18 months after receiving it.

6. Opposition to Register a Trademark

The opposition must be filed to the WIPO in the appropriate manner if any member nations have any objections or rejections to the trademark registration application. The trademark applicant and the relevant Madrid Protocol member country will deal directly with the opposition to the trademark application. The response, appeal, hearing, and prosecution are the opposing procedures. The whole opposition process will involve the WIPO.

7. Grant/Authorization to Register an International Trademark

Once the member nations accept the application, the trademark will be registered under the Madrid Protocol in the corresponding chosen member nations for a period of ten years. Following approval of the registration application, the applicant will receive a statement of grant attesting to the international trademark registration of an Indian trademark.

Conclusion

International trademark protection is currently the most challenging aspect of trademark protection. A trademark owner must register their trademark rights in each country where protection is desired because it is impossible to register a trademark in every nation. Trademark registration is limited to particular geographic regions. Once the nation’s boundaries are crossed, any national trademark registration becomes invalid. It prohibits the owner from using their rights to Trademark Registration outside of the nation. In other words, you need to submit a unique trademark application for every country in which you hope to build your business. You have to register a trademark by following the other nation’s guidelines.If you register your trademark, it will become globally recognized and protected. With the Madrid Protocol for International Trademarks Registration, this process has become significantly simpler.To sum up, the Madrid Protocol could help you save money and time when applying for trademark protection abroad.