“India’s accession to the Madrid System is a major milestone in bringing us closer to transforming the Madrid System into a system with truly global reach.”- Francis Gurry, WIPO director general
Madrid System is exercised under Madrid Agreement (1981) and the Madrid Protocol (1989). It is supervised by the International Bureau of the World Intellectual Property Organization (WIPO) which is located in Geneva, Switzerland. The framework was fundamentally acquainted to provide comfort in the arrangement of registration of marks. Each region has an alternate framework for registration of trademarks. The framework empowers the registration of trademarks in numerous jurisdictions worldwide that are a part of Madrid Union’s 85 member nations by recording a single application in the Applicant’s national trademark office, or regional trademark office.
A man to secure his trademark needed to get his stamp enrolled in the nation where he needs to ensure it. Be that as it may, a trademark conceded by a specific nation served to secure the enthusiasm of the holder just in that nation and any individual who needed to ensure his trademark internationally was hence required to file for trademark registration in every individual nation where such assurance was looked for. This made a ton of disarray like the multiple gathering of applications and bothers to the potential candidate and furthermore expanded the expenses for him. In order to put an end to this chaos, India became the 90th member of the Madrid protocol on July 8, 2013 in order to provide the local businesses to protect their trademarks in various jurisdictions by just filing one application with one set of essential fee that is to be paid. This further allows the owner of the brand to organize registration of international trademark which in turn brings confidence to do business in India.
As soon as India became the member of the Madrid Protocol there were few amendments that were made to the Indian trademark law in order to satisfy its norms with the Madrid system. The Trademarks (Amendment) Act, 2010 was passed on 21st September 2010 which led to the formation and incorporation of Chapter IVA (containing sections 36A to 36G) in the Trademarks Act 1999 that focuses on the “Special Provisions relating to Protection of Trademarks through international registration under the Madrid Protocol.” This amendment was done to bring the Madrid protocol in force in India.
Formerly, Indian brand owners that needed to ensure their trademarks in different purviews needed to enlist neighborhood to advice in every jurisdiction and comprehend the significant laws, which could be unreasonably time-consuming and exhausting. Likewise, trademark owners outside of India needed to draw in nearby guidance keeping in mind the end goal to enlist their Trademark Registrations in India. The registration procedure was frequently long. A smooth registration process (through household recording) could take up to a few years. The Madrid framework has not just facilitated the method of applying for the trademark yet, in addition, simplified its consequent administration. Presently candidates can assign India and get trademark security or get “international registration” in India in view of an ‘essential application’ or ‘fundamental registration’ in a Protocol member nation.
The characteristics of Madrid protocol are:
- The regulatory body for Madrid Protocol is International Bureau of World Intellectual Property Organization and the appropriate office for Indian Applicants to file an application under Madrid Protocol / International Application in the Indian IP office.
- The term of registration under Madrid Protocol is a time period of 10 years which can be further renewed.
- A legal entity or natural person who has a commercial establishment in, or is a domicile or national of, a country which is member to the Madrid protocol can file an application through this protocol.
- The application under the Madrid application can be filed in the following languages:
- English
- Spanish
- French
Like any other protocol there are pros and cons to the Madrid Protocol as well:
- Advantages:
- It has a unified exchange trademark application process by which a man can get security worldwide through a single application and a single arrangement of expenses.
- It is a more helpful and knowing technique.
- It prevents the unreasonable gathering of applications.
- The Protocol Applications might be in French, English or Spanish (which is clearly leeway in non-French talking purviews like India.
- The procedure is less tedious.
- Any adjustment in the subtle elements of the correct holder (Eg. name, address and so forth) can be changed by sending one single report to the International Bureau and no endeavors must be made at each national office.
- Under the Madrid Protocol, it is truly simple to include and along these lines assign the part nation at a later date under a similar International registration. The recording and upkeep expenses related to the international registration are bring down after some time than keeping up a few separate national registrations.
- Disadvantages:
- The international registration can stretch out just to Protocol domains.
- The Indian Trademarks registry has not possessed the capacity to engage the national filings on account of the absence of labor. Since India has embraced the Madrid framework, it would be significantly more hard to investigate both National and International filings in the meantime and with same labor.
- The Indian Trademarks registry has not possessed the capacity to engage the national filings as a result of the absence of labor. Since India has embraced the Madrid framework, it would be much more hard to investigate both National and International filings in the meantime and with same labor.
- Under the convention, the international applications must be prepared inside year and a half. Along these lines, the national filings may get postponed.
- The international application is reliant on the essential application/registration, thus, if there is any adjustment in the “fundamental” application or registration (like cancelation), these progressions should consequently apply to the international applications also.
- Assigning the responsibility for International registration to elements dwelling or having an association with Non-Madrid Protocol state is denied under the guidelines of the Madrid Protocol. This is bad for India since it has business interests with a few non-part nations and now it should document national applications to manage these nations.
- If an Indian fundamental stamp is crossed out or restricted in initial five years then the International check will correspondingly be scratched off or constrained. After the expiry of this five-year term, be that as it may, the international registration winds up noticeably free.
Madrid Protocol overall offers a kind advantage to all local organizations and business people to ensure their trademark portfolios over the world along with a convenient and cost-effective way of obtaining trademark protection. In like manner, the choice of picking India as an assigned nation has facilitated the financial aspects of documenting trademark applications for some international gatherings.
For any International or National Trademark Registrations in India, you can consult with Company Vakil and their Specialized Trademark Attorney’s would be happy to help you.
