International Trademark Registration

Process of International Registration Under Madrid Protocol

An international application may be made under Madrid Protocol by any person or entity that has an active trademark application or a valid trademark registration in India. Upon making an international application, the trademark is entered into the International register of trademarks pursuant to which subsequent filings are facilitated in any of the member countries. While the international application is dependant on the validity of the trademark in India for the first five years, the mark is entered into the International Register within 3-10 months of such application. Simultaneously, upon application the mark is processed for filing in the member countries specified in the application which can be made at the time of filing the International Application or at a later stage. Once processed for filing in the member countries, the application proceeds for registration based on conditions prevalent in each member country within 18 months.

Advantages of filing an International Application under Madrid Protocol

• Eliminates high filing costs involved in individual country filings;
• Eliminates the requirement and costs of a foreign attorney at the time of international filing;
• Lower costs involved in amendments/post registration maintenance and renewal;
• Time for grant of registration restricted to a maximum of 18 months (if no oppositions)
• Registration in each applied country is processed independently;
• Date of Indian filing may be claimed as priority date if Madrid Protocol filing is done within 6 months of the Indian filing. In other cases, Madrid Protocol filing can be done but priority cannot be claimed; and
• Application can be made for registration in additional countries at any later stage once international application is made

Madrid Protocol, if rightly used, may bring about much needed convenience and cost savings for Indian applicants looking to file trademarks in foreign jurisdictions.

 

 

 

 

INTERNATIONAL TRADEMARK REGISTRATION

MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS (THE MADRID SYSTEM):

The Madrid System functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. The system enables the registration of trademarks in multiple jurisdictions worldwide that are part of Madrid Union’s 91 member countries by filing a single application in the Applicant’s national trademark office, or regional trademark office.

What is Madrid Protocol

The Madrid Protocol is an international trademark filing system that provides a cost-effective and efficient way for individuals and entities to secure protection for their marks in multiple countries by filing one application with the Indian Trademark office. At present, there are a total of ninety one Contracting parties that are members of the Protocol. The list of members of the Madrid Protocol may be accessed here.

Process of International Registration Under Madrid Protocol

An international application may be made under Madrid Protocol by any person or entity that has an active trademark application or a valid trademark registration in India. Upon making an international application, the trademark is entered into the International register of trademarks pursuant to which subsequent filings are facilitated in any of the member countries. While the international application is dependant on the validity of the trademark in India for the first five years, the mark is entered into the International Register within 3-10 months of such application. Simultaneously, upon application the mark is processed for filing in the member countries specified in the application which can be made at the time of filing the International Application or at a later stage. Once processed for filing in the member countries, the application proceeds for registration based on conditions prevalent in each member country within 18 months.

Trademarks are world over known to constitute words, names, letter, numeral, graphical representations in the form of shape/ configuration of goods, labels, logos, packaging, combination of colors, etc. with respect to goods or services, that are capable of distinguishing the goods or services of one person from those of another. Unregistered trademark rights accrue from common law creating a passing off right of action that must be established through priority date of first use along with continuous use over a period of time.

Although trademark registration is not compulsory in India, a major advantage of registration is that it confers a statutory monopoly and constitutes prima facie proof or evidence in the eyes of law towards the creation of an exclusive right in favor of the owner of the trademark. Infringement action under The (Indian) Trademarks Act, 1999, can be pursued only for a registered trademark.

The Trade Marks (Amendment) Act, 2010 passed on 21.09.2010, the Madrid Protocol into force in India, once it is notified. This will enable applicants to make a single international application for trademark registration across numerous countries granting widespread trademark protection rights.