The Madrid System for the International Registration of Marks (Madrid System)

July 16, 2013
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Trademark Litigation

The “Madrid System” is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions. It is governed by two treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of WIPO in Geneva, Switzerland. Madrid System permits the filing, registration and maintenance of trademark rights in more than one jurisdiction provided that the target jurisdiction is a party to the system. It is a primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. However, the scope of Madrid system is different viz a viz “European Community Trade Mark System” so far as creating an international registration is concerned because it provides a mechanism for obtaining trademark protection in many countries around the world rather than seeking protection separately in each individual country. It creates a bundle of national rights capable being administered centrally as opposed to the “European Community Trade Mark System” which creates International Registration.

More on WIPO: http://wipo.int/portal/index.html.en

INDIA as a Member:

Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 88 territories known as Contracting Parties plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). India also became a signatory to Madrid Protocol on April 8^th, 2013 and subsequently acceded on July 8^th, 2013, bringing the total number of members to 90.

For a list of Members of Madrid System:

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

India as a member of Madrid System:

http://www.wipo.int/pressroom/en/articles/2013/article_0008.html

Working of the Madrid System:

The Madrid System has a mechanism under which a trademark owner has made an application for registration or having an existing registration in a member jurisdiction, which is called as ‘Basic Application / Registration’, may obtain “International Registration” for their trademark through World Intellectual Property Organisation (WIPO). Thereafter the owner of the mark may opt for securing the protection in any one or more member jurisdictions by virtue of the “International Registration”, which process is called as ‘Designation’. Further by virtue of Madrid protocol, it has become possible for a trademark owner to obtain ‘International Registration’ at the time of making an application for registration in any member jurisdiction, concurrently. A trademark owner can obtain trademark protection in any or all member states by filing one application in one jurisdiction with one set of fees and make any alterations in information (Name, Address etc.) and renew registration across all applicable jurisdictions through a single administrative process.

However as a corollary, the natural flip-side of the aforementioned characteristic of Madrid System / Protocol is that in case a ‘Basic Registration / Application’ is refused/cancelled or withdrawn, the International registration would also get refused/cancelled or withdrawn to the same extent. For instance, an application for registration of a mark for herbal products like soaps, face wash and shampoo is pending but the ‘Basic Application’ for shampoo is cancelled then the ‘International Registration’ of the same mark for shampoo will also get cancelled. Similarly if ‘Basic Application’ is refused the ‘International Registration’ will also get refused. This system whereby a ‘Basic Application’ is attacked for registerability is called ‘Central Attack’. In order to mitigate the effects a successful central attack, an ‘International Registration’ is transformed into a series of applications in each jurisdiction, a process known as ‘Transformation’, though this process is an expensive proposition but makes good sense apparently not only because of this advantage but also because the resulting applications will receive registration date of international registration as their filing date.

For Reference: http://www.wipo.int/madrid/en

FAQs

1. What is the Madrid System?

Madrid System is a centrally administered system of obtaining a bundle of trademark registrations in different jurisdictions managed by the International Bureau of World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. Under the WIPO-administered Madrid system, a trademark owner may protect a mark in over 80 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language.

2. What are the advantages of the Madrid System / Protocol?

The Madrid Protocol is useful to obtain an international registration on a pending TM application so that the owner can apply for the International Registration’ concurrently or immediately after filing an application in a member jurisdiction. In addition, it provides to the applicant, the following advantages:

One application in one place going through national Trade Mark Office to WIPO
One set of documents in one language, English, French or Spanish
One fee in one currency
One registration number, one renewal date covering more than one country
No need for legalisation of documents
Cost-Effective
Only one request for change of name or address of the holder of the registration

3. When did Madrid System become effective in India?

India became a signatory to Madrid Protocol on April 8^th, 2013 and subsequently acceded on July 8^th, 2013, bringing the total number of members to 90. With effect from 8^th July 2013, registered and pending trademark proprietors in India have become eligible to apply for International Registration of their mark in the designated member territories. Similarly, as of that date, foreign trademark owners can seek an extension of protection of international registration of a mark to India.

4. Who can file an application under Madrid Protocol from India?

Any trademark who is a national of has a domicile in, or has a real and effective industrial or commercial establishment in India can submit an international application under Madrid Protocol from India. Applicants wishing to use the Madrid system must either hold a registration or pending application for trademark protection in Indian trademark registry before seeking international protection.

5. Can India be designated as a Contracting Party in International Registrations existing prior to India acceding to Madrid Protocol?

No. Protection of a mark under International registration can only be extended to India in cases where an application for International Registration under Madrid Protocol is made after India acceding to Madrid Protocol i.e. 08^th July 2013.

6. What is the duration of an international registration?

An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.

7. What is the cost of filing an international application under the Madrid Protocol from India?

An international applicant must pay an amount of Rs.2000/- as Handling Fee to Indian TM Registry. This fee is charged for certifying international applications and transmitting them to the International Bureau. The basic fee for international registration is Swiss Francs(SFR) 653 for non-colour marks for up to 3 classes payable in Swiss Francs. A supplementary fee of SFR 100 is payable for each extra class. In addition to the basic application fee, an additional supplementary fee of approximately SFR 100 for each designated country is charged. Though in certain cases the fee may vary as some of the member countries like Japan and India have fixed individual Fee. There is also a provision of expanding the geographical scope of protection of your mark by adding more countries at later stages.

8. After the mark in an international application registers, can the holder of the international registration request an extension of protection in additional countries?

Yes. The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties.

9. In what way is Community Trade Mark Registration different from International Registration under Madrid System?

CTM: A single registration creates a single unified right throughout the European Union. The trademark that is the subject of a CTM application must be registrable in all EU Member States; if a ground for rejection applies in just one of the EU Member States, the mark cannot be registered as a CTM, although conversion to national applications is possible in some cases.

MP: Under the Protocol, an application creates rights in those member countries that grant protection through registration. Even if the IR application is refused protection in some designated countries, the application can proceed to registration in the remaining designated countries.

CTM: CTM applications are only examined on absolute grounds. For example, the likelihood of confusion due to a prior-filed registration is not a ground for refusal of CTM applications.

MP: An application can be refused registration in the examination process by any of the designated countries under their national laws. Grounds for refusal in member countries may be more extensive than for a CTM application and may include, among other things, a refusal based on the likelihood of confusion.

CTM: A CTM registration is issued by the Office for Harmonization in the Internal Market (OHIM).

MP: The World Intellectual Property Organization (WIPO) maintains the International Register of marks and administers the Madrid Protocol System.

CTM: There are no restrictions on applicants that can apply for a CTM. A CTM applicant is not required to have a commercial establishment in the EU.

MP: An applicant for an IR must be a national of, or domiciled in, one of the member countries of the Protocol or have an industrial or commercial establishment in one of the member countries (its “home country”).

CTM: The filing fee for a CTM application covers all 27 countries; no choice of countries is allowed.

MP: Fees for an application filed under the Madrid Protocol are dependent on the number of countries designated by the applicant.

CTM: The initial CTM registration period is ten years from the date of filing the application and is independent of any other application or registration.

MP: The initial IR period is ten years from filing; however, it is dependent upon a valid home application or registration for the first five years.

CTM: A CTM applicant is free to file for whatever goods and services it wishes. Priority under the Paris Convention based on a previously filed application may be claimed, but additional goods and services may also be covered (without priority).

MP: In an application filed under the Madrid Protocol, the description of goods and services must be no broader than those in the home application regardless of whether the priority is claimed.

CTM: It is possible to obtain an injunction against infringement that covers the entire EU.

MP: Action for infringement is taken through the courts of the country concerned and generally any injunction extends to that country only.

About the Author: Mr Sharad Saini, Trade Mark Attorney at Khurana & Khurana and can be reached at [email protected]