On April 8, 2013, India has become signatory to Madrid Protocol for International Registration of Marks at the World Intellectual Property Organisation. Currently there are 88 other member countries to Madrid System (Madrid Protocol and Madrid Agreement) for the international registration of trademarks. The system is administered by the International Bureau of the World Intellectual Property Organization (WIPO), which maintains the International Register of marks. The system will come into force in India in 3 months i.e. July 8, 2013.
Advantages of Madrid system is that it allows filing a single application, in one language to be filed with the trademark office of the home country to obtain protection in several countries. It guarantees on the period within which potential grounds of refusal to protect a mark can be raised by the offices of the designated countries. It allows a single request to record changes (transfers, changes of name or address, etc.) which may affect the registration as a whole or in part. A single request for renewal can be made.
Prerequisites for filing an International Application:
- Existence of a registered or pending mark for same goods and service with “Office of origin” from where international application is to be filed.
- Applicant must be person who has a real and effective industrial or commercial establishment or a domicile in, or who is a national of, one of the countries party to the Protocol.
- Basic fee of 653 Swiss francs for black and white mark or 903 Swiss francs where the mark is in color
- Name of the Countries where protection is sought must be listed in the international application. Additional countries can be designated at any time, provided they are party to the Protocol at the time of the designation. Such subsequent designations are useful where new countries accede to the Protocol or simply where the holder’s interest in a country develops after the international registration has been made.
- Either a standard designation fee of 73 Swiss francs or an individual designation fee whose amount is fixed by the country concerned (but may not be higher than the amount that would be payable for registering the mark directly with the office of the country concerned, for example in respect of India the amount fixed by Trademark Registry cannot exceed INR 3500) for each designated country;
The Office of origin may charge a handling fee for forwarding the international application to the International Bureau. The fees are to be paid direct to the International Bureau although, in some cases, the Office of origin may collect and forward them.
A supplementary fee of 73 Swiss francs is payable for each class of goods and services beyond the third class. This supplementary fee is payable only if there are one or more countries designated with standard designation fee. Accordingly if all the countries designated are ones in respect of which an individual designation fee is payable, no such supplementary fee is payable.
An international application can be filed in any one or more language amongst English, French or Spanish as the Office of origin may restrict.
It is also possible to claim priority in an International Application from a first national or regional application, by filing the International Application within six months of the filing of that first application.
The Office of origin then forwards the international application to the International Bureau of WIPO. The office of origin has to supply the International Application to WIPO with all essential details within 2 months of filing. The Office of Origin has to certify that the mark in the international application is the same as in the basic application or registration, that the applicant is the same person as the owner of the basic application or registration and that the goods and services listed in the international application are covered by those listed in the basic application or registration. The International registration bears the date on which the international application was filed with the Office of origin.
The International Bureau checks that all the filing requirements are met and that the goods and services are correctly classified. If so, the mark is recorded in the International Register. The International Bureau then notifies the international registration to the Offices of the designated countries. The International Bureau does not examine whether the mark as such qualifies for protection, or whether an identical or similar mark has already been registered; that is to be examined by the respective Offices of the designated countries.
From the date of the international registration, the protection of the mark in each of the designated countries is the same as if the mark had been the subject of an application filed direct with the Office of that country. If no refusal is notified within the prescribed time limit, the protection of the mark in each designated country is the same as if the mark had been registered by the Office of that country. The Office of a designated country has the right to refuse protection of a mark in the territory of that country. Refusal may be made on any of the grounds on which an application for registration filed direct with that Office might be refused. Refusal is notified to the International Bureau and recorded in the International Register.
Normally, any refusal must be issued within 12 months from the date on which the Office concerned was notified of such designation. By making a declaration, a country may extend this time to 18 months. Similarly, by making a declaration, a refusal based on opposition may be issued after expiry of 18 months period, but in that case the country must notify the International Bureau about possibility of such opposition within 18 months. It allows holder of an international registration to know whether his mark has been accepted for protection in each of the designated countries, or whether protection has been refused in one country or whether there is still a possibility of refusal on the basis of an opposition in a particular country.
The holder has the same right to contest the refusal with the Office that issued it as if the mark had been deposited direct with that Office. It is advisable to hire services of Local Attorneys within such jurisdiction to attend to the objections/ refusal, who may guide the holder as to local provisions and practices to counter such objections/ refusals. If the refusal relates to only few of the goods and services listed in the international registration, and the refusal is not contested and/or contest is not successful, the mark stands protected for the remaining goods or services, without any action being needed on the part of the holder. In India typically objections in relation to one class is not only based on identical-ness or similarity of goods or services, but mainly because of existence of another identical or deceptively similar mark in same class, there objection has to construed as objection to such entire class.
The international registration shall be dependent on the application or registration with the Office of origin (the “basic application” or “basic registration”) for the first five years. After the end of the five-year period, the international registration becomes independent of the basic application or basic registration. It is the period within which the basic application is subject to “central attack”. If, during the first five years following the date of the international registration, the basic application is refused or withdrawn, or the basic registration is canceled, the international registration must also be canceled. This is also the case if the basic registration is refused after the end of this five-year period as a result of an action begun within that period. If the refusal or withdrawal of the basic application or cancellation of the basic registration is for only some of the goods or services, the cancellation of the international registration will likewise be partial and limited to those goods or services.