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Filing Of Trademarks Under Madrid Protocol: Procedure

Importance of Trademark

A trademark is a kind of legally recognized intellectual property (IP) to identify and distinguish particular goods from those of others, owned by an individual, business organization, or any legal entity. Its purpose is one of the most important investment to prevent business competitors from stealing the owners' identity of any sort. However, if the business operates in international regions, it may be a good idea to register the trademark through the international trademark registration service to make it more effective, protected and protective.

The Madrid Protocol

Registration of the trademark is a tedious process in every country, especially for online businesses. If the business functions within the country where it registered its trademark, the international registration of the trademark is not a requirement else, it is always advised to have the trademark registered internationally otherwise. The system of international trademark registration is called the Madrid system or Madrid Protocol, which is administered by the World Intellectual Property Organization (WIPO).

Registration of trademarks internationally is governed by two independent treaties, namely the Madrid Agreement and the Madrid Protocol. These two, together, are known as the Madrid System for the International Registration of Marks (the Madrid System).

The Protocol is not a "protocol" to the Agreement or a substantive harmonization treaty, but it is a separate treaty. The Agreement was established in 1891 to provide a mechanism that would allow for a single and low-cost international trademark registration while eliminating the need for filing, prosecuting or sustaining separate registrations in plentiful (approximately 100) countries. The Protocol was adopted later in 1989 to correct the apparent deficiencies in the Agreement.

It also provides the trademark holder with a cost-effective and efficient way to ensure protection for marks in several countries by applying at one office, in one language by paying one set of fees in a single currency, neither it needs a local agent to file the initial application.

Madrid Protocol in India

The Madrid system provides the facility for the countries which are a member of Madrid Union. India was initially not a member of the Madrid system, but it decided to become one as soon it realized the advantages. India became the Madrid Protocol member with effect from July 8, 2013. The trademark applications can now be filed from India using the Madrid system.

India needed certain amendments to the Indian Trademarks Law to comply with the Madrid system. To achieve this, India passed the Trade Marks (Amendment) Act, 2010, and it helped the country to bring into force the Madrid system. This amendment included Chapter IVA (with sections 36A to 36G) in the trademark ACT, 1999. Chapter IVA explicitly focuses on the special provisions relating to Protection of Trademarks by international registration under the Madrid Protocol.

After easing out applying for the trademark for international protection, the Madrid system also simplified its subsequent management. Applicants abroad can now designate India and get trademark protection for India, or Indian owners can get international registration in India based on a basic application or registration in any Protocol member country.

Filing International Trademark Application in India

To file an international application, the owner must have already registered or applied for a mark in his home or domestic IP Office. Let us look at the process, stages and other aspects to use the Madrid system to apply for the trademark registration internationally.

Basic application

The prerequisite for applying under the Madrid Protocol in India is a pending application for the trademark or approved mark from the Indian Trademark Office (ITO). The ITO, then, certifies that the information of the international application is matching with the basic application. It also certifies the date of application and forwards the application to WIPO.

Examination by WIPO

WIPO conducts a formal examination to ensure that the application complies with the statutory requirements. In case of any irregularities, WIPO notifies the applicant about it which he must resolve within three months. The application gets abandoned if the applicant fails in this resolution.

Publication by WIPO

Post examination and remediation stage, WIPO records the application in the International Register and publishes in the WIPO Gazette of International Marks. WIPO sends the applicant a certificate of International Registration afterwards and notifies the other trademark offices in the countries about the applicant's choice of extending the protection.

Subsequent Examination by the Trade Mark Office of the Designated Country

The application passes through similar examinations at the trademark office of the designating country. The designating country notifies the WIPO about acceptance or refusal of the application within 12-18 months, which in turn gets recorded by WIPO and notified by it to the applicant. In India, the applicant must file a formal response within one month from the date of receipt of such provisional refusal notification.

Advertisement and Registration

In case of a rejected application by WIPO, the applicant's response is reviewed by the Indian Trade Marks Office over a couple of months. The trademark subsequently gets advertised in the Indian Trade Marks Journal and remains open for third-party opposition for four months. In the absence of any opposition during this period, the trademark shall be granted required protection by the Indian Trade Marks Registry for ten years.

In case no provisional refusal is notified to WIPO within the stipulated time, the trademark ordinarily proceeds towards advertisement in the Journal and follows the usual procedure as above.

Renewal

Renewal application, concerning the Madrid application designating India, needs to be made only at WIPO, which notifies it to the Indian Trademark Office. It is apposite to note that any change can be made by merely filing a single application at WIPO (such as applicant/ownership information, assignment, limiting goods and services, renewal of the registration etc.). The same application stands functional to all the designated countries and gets reflected accordingly.

Conclusion

The accession of the Madrid Protocol brought the reality of an international trademark registration system through a single application and a single set of fees one step closer to the fruition. The system is now more inclusive and offers an affordable and efficient way to gain trademark protection and its maintenance. The process is less time consuming as well as easy for customization or changes. The Madrid Protocol relaxed adding and subsequently designating the member country under the same International registration at a later date.

By: Jain & Partners
The author can also be reached at info@jainandpartners.com​

 

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on 29 February 2020
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