International Registration Of Trademarks Under The Madrid Protocol INTRODUCTION In today’s Globalized Marketplace, protecting Intellectual Property across borders is crucial for businesses of all sizes. The Madrid Protocol offers streamlined and cost-effective solution for Trademark registration in multiple countries. Understanding its intricacies can empower businesses to expand...
International Registration Of Trademarks Under The Madrid Protocol
INTRODUCTION
In today’s Globalized Marketplace, protecting Intellectual Property across borders is crucial for businesses of all sizes. The Madrid Protocol offers streamlined and cost-effective solution for Trademark registration in multiple countries. Understanding its intricacies can empower businesses to expand their brands internationally while safeguarding their assets.
WHAT IS MADRID PROTOCOL?
The Madrid Protocol is an international treaty established to simplify the process of registering trademarks in multiple countries. It provides a centralized system for filing trademark applications, allowing applicants to seek protection in multiple member countries through a single application.
KEY CONSIDERATIONS:
1. Centralized Filing: Through the Madrid Protocol, applicant can file a single international application with the World Intellectual Property Organization (WIPO) to seek trademark protection in multiple member countries.
2. Cost Efficiency: By centralizing the application process, the Madrid Protocol can significantly reduce the costs associated with filing separate applications in each target country.
3. Streamlined Management: The Madrid System enables efficient management of trademark portfolios, allowing for easy modifications, renewals and monitoring of registrations across multiple jurisdictions.
4. Expansion Opportunities: Business can leverage the Madrid Protocol to expand their brands into new markets with ease, enhancing their global presence and competitiveness.
5. Flexibility: The Madrid System offers flexibility for applicants to designate additional member countries for trademark protection at a later stage, known as subsequent designations.
6. Time-frame: The time-frame for notifying the acceptance or refusal is 12-18 months from the date of receipt of application under Madrid Protocol.
7. Costs: While filing through the Madrid System offers cost efficiencies compared to individual national filings. The requirement of engaging the local representative arises in case the application receives any refusal from any designated country.
8. Central Attack: If the basic application is rejected as a whole, the international registration would also be totally refused. The process of attacking the basic application or basic registration for this purpose is generally known as 'central attack. In case within five years from the date of the International Registration, the basic application or registration ceases to have effect in whole or in part (rejection or withdrawal of the basic application or cancellation/revocation/invalidation, or lapse of the basic registration) by the office of origin, the international application shall automatically be refused or cancelled in all the designated countries.
After five years, the IR registration becomes completely independent and will not get affected by the status of the basic application or registration.
FILING PROCEDURE FOR MADRID APPLICATIONS INDIA, AS THE OFFICE OF ORIGIN:
1. Basic Application or Registration: The first step in filing a Madrid Application in India is to have an existing trademark application or registration with the Indian Trademark Registry. This serves as the foundation for the international application.
2. Online Filing: The Madrid application process in India is conducted online through the e-filing portal of the Indian Trademark Registry. Applicants can access the portal and initiate the international application by filing form MM2 (E) providing the necessary details and documentations along with the handling fee of INR 5000.
3. Submission of International Application: Using the online platform, applicants submit the international application to the Indian Trademark Registry. The application includes information such as the basic application or registration details, the list of goods/services covered by the trademark, and the designated member countries where protection is sought.
4. Contracting party US – In addition to the above, Form MM18 for ‘intent to use’ is also required to be filed if designating country is USA.
5. Formal examination (Indian Trademarks Registry): Upon reviewing the international application, the Indian Trademark Registry conducts an examination to ensure compliance with relevant laws and regulations. If the application meets the requirements, it is certified and forwarded to the International Bureau of WIPO.
6. Payment of Fees: After conducting the formality check of the application (form MM2 E), the Indian Trademarks Registry issues a notice to the applicant for the payment of fees including the basic fee and individual fees of each designating country to WIPO. Fee calculator - https://madrid.wipo.int/feecalcapp/?Lang=E
7. Formal Examination (WIPO): WIPO checks the international application complies with all formal requirements (sufficient contact details, designation of at least one Madrid System Member, quality of images, payment of fees etc.).
8. Publication of IR application: Upon reviewing the application WIPO registers the mark in the International Register, and allots International Registration number as an acknowledgement of compliance with WIPO’s formal requirements and notifies the designated member countries.
9. Substantive Examination by (Member IP Office): Once notified, the designated countries conduct substantive examination of the International registration within the prescribed timeframe of 12-18 months from the date on which the WIPO notifies the office of the designated countries. The designated countries notify WIPO of its decision (acceptance or refusal) and the International Register is accordingly updated.
CONCLUSION:
The Madrid Application filing procedure in India provides a streamlined and accessible avenue for businesses to secure trademark protection in multiple countries. By navigating this process effectively and leveraging the advantages of the Madrid system, entrepreneurs and organisations can expand their brands globally while safeguarding their intellectual property assets. Understanding the steps involved and seeking professional guidance where necessary can contribute to a smooth and successful international trademark registration journey.