And so, instead we have what I like to term a ‘forward-looking’ note — in the form of a quick and brief guest note from one of our readers, Tasneem Shariff, on the procedural formalities that will likely crop up in trademark practice, as and when the amended legislation is implemented. Tasneem presently works with Nagarjuna Fertilizers & Chemicals Limited, Hyderabad, and is a lawyer and a Company Secretary, who has, among other things, completed a Post graduate diploma in IPR from National Law School, Bangalore.
While this is not a commentary on the amendment in any way, it is hoped it will serve as a useful resource for practitioners, and will also help stakeholders speculate on possible changes that need to made on the regulatory front, in keeping with a recent call for suggestions for amendments to the TM Rules by the Controller General of the IPO.
Guest post: FAQs on India and the Madrid Protocol
The Trademarks (Amendment) Bill 2009 that allows any person or enterprise to seek registration of trademark in any of the 84 member countries of Madrid Protocol through a single application was passed by the Lok Sabha (House of People) in December 2009. The bill was passed by Rajya Sabha (House of States) on 10th August 2010.
The bill amending Trademarks Act to bring into force Madrid Protocol in India is yet to be implemented i.e. the effective date for the amendment bill to come into force has not yet been notified. The rules have to be amended to enable filing of Madrid applications in India. The Ministry of Industries have assured the Parliament that the infrastructure in Trademarks Registry would be upgraded to ensure that Madrid Protocol is implemented in India in appropriate manner.
What is the Madrid System?
The Madrid system facilitates registration of Marks in the International Register administered by the International Bureau of the World Intellectual Property Organization (WIPO). This extends protection to all the designated member countries, which is equivalent to territorial registration in nature.
What is the procedure for an application under the Madrid Protocol?
- Upon India being a signatory to the Madrid Protocol, applicant while making an application to National Office may select from the list of the member countries where he seeks protection of mark.
- The National Office in the country of origin examines whether the international application corresponds to the basic application and complies with home state requirements.
- On the National Office being satisfied, it forwards the application to WIPO. WIPO examines the application and the International Bureau places the mark in the International Register of Trade Marks.
- The International Bureau advertises the mark and passes on the details of the application to the designated countries listed in the application for their consideration, consequent approval and granting of registration.
- Member States designated in the application have twelve months to notify WIPO of any objections, but under special provision United Kingdom has eighteen months.
- If any Member State stated in the application does not send any objection within the prescribed period time limit it is deemed to be accepted by the Member State.
What is the life of a mark under the Madrid Protocol?
Registration under the Protocol lasts for 10 years, but can be renewed subsequently for periods of ten years. Any regional registration can be made an international registration, upon satisfying the conditions and requirements under the Madrid Protocol. The renewal rights in other countries designated in the application can be done under a single transaction.
What is the process for objecting to an application under the Madrid Protocol?
Besides individual oppositions before the National Offices of the designated Member States stated in the application, there is also a provision for a “Central Attack” under the Madrid Protocol. Under this if any application to the WIPO under the Madrid Protocol is rejected in the country of origin itself, at the discretion of the National Office or on the basis of an opposition, the application is then treated as rejected by all Member States designated in the application, in which the applicant seeks protection.
What are the advantages of the Madrid Protocol?
- The Madrid Protocol enables applications to other 85 member countries. The list of members can be viewed here.
- International filing of applications can be accomplished without the appointment of a local agent in the designated countries.
- A single application at the origin country can be made either in English or French language.
- A single filing fee is payable in the applicant’s home currency. This eliminates the need to process multiple bills from different countries.
This is particularly relevant to Indian companies having foreign interests, as it removes several procedural barriers in obtaining effective international protection of marks, and reduces considerably the cost and effort in such applications.
Madrid protocol simply makes trademarks registration easier. You do not need to go to a particular country to register your trademark. It saves time and money.