Trademark

Madrid System & Indian trademark owners – Part I


                                

The Trademarks (Amendment) Bill 2009, which aims at bringing Madrid Protocol into force, has been passed by both Lok Sabha and Rajya Sabha. For more see here. However, India is yet to become a member of Madrid Protocol. [For the list of  members as on September 17, 2010, see here.] In the light of passage of Bill by both the houses of Parliament and Cabinel approval to accede to the Protocol, India’s entry into the Madrid Protocol is imminent. In the light of this development, I intend to discuss some essential considerations which shall form part of any trademark strategy which involves Madrid System.  I shall discuss them in two parts. In the first post, the  procedural framework as prescribed by the Madrid System shall be discussed. In the second post, some essential considerations qua usage of Madrid System shall be discussed.


REGISTRATION OF TRADEMARK IN A FOREIGN JURISDICTION

A trademark can be protected by registration in a foreign jurisdiction in three ways:
•    registration at national trademark office
•    registration at regional trademark office if the foreign country is part of that regional set up
•    international registration of trademark

The registrations of a mark at national and regional trademark offices are acceptable options in case of management of a limited trademark portfolio. However, it may not be the case when the contours of a portfolio are broader than that of national and regional registrations. Such registrations may create difficulties for trademark owners in both administration and management of the portfolio. This calls for the usage of Madrid System which provides for international registration of marks i.e protection of marks in several countries by filing one single international application. The System is governed by two treaties: the ‘Madrid Agreement Concerning International Registration of Marks’ (hereinafter Agreement) which dates to 1891 and the ‘Protocol Relating to the Madrid Agreement Concerning International Registration of Marks’ (hereinafter Protocol) which came into force in 1996. 


The Madrid System for the international registration of trademarks, administered by the International Bureau of World Intellectual Property Organization (hereinafter WIPO), provides one single procedure for the registration of a mark in several territories. Any State which is a party to the ‘Paris Convention for the Protection of Industrial Property’ can become a party to the Agreement or the Protocol or both. The Madrid Agreement is the oldest multilateral regime to simplify and harmonize the standards and procedures for trademark registration and protection. The Madrid Protocol which was adopted in 1989 introduced certain new provisions into the system of the international registration of marks. It was aimed at removing difficulties which prevented certain countries from adhering to the Madrid Agreement.

MAIN DIFFERENCES BETWEEN MADRID PROTOCOL & MADRID AGREEMENT – AN OVERVIEW

As compared with the Madrid Agreement, the Protocol introduces the following provisions:


– international registrations can be based upon national applications as well as national registrations;  under the Agreement, an international application can be based only upon a registration in the Office of origin; 

– each contracting party in which the applicant seeks protection may elect for a period of eighteen months (instead of one year) or an even longer period in the case of opposition within which to declare whether protection can be granted to the mark in its territory;  under the Agreement, this period is limited to one year; 

– Office of each contracting party may receive higher fees than under the Agreement;

– an international registration which is cancelled at the request of the office of origin (“central attack provision”), for instance owing to the refusal of the basic application or cancellation of registration within five years from the date of the international registration, may be transformed into national (or regional) applications in the respective contracting parties in which the international registration had effect, each benefiting from the date of the international registration and where applicable, its priority date (“transformation provision”);  this mechanism does not exist under the Madrid Agreement.

APPLICATION FOR INTERNATIONAL REGISTRATION


An application for international registration must be presented to the International Bureau through the office of origin.  The application may designate one or more contracting parties in which the mark is to be protected. Subsequently, more contracting parties may be designated.

WIPO, upon receipt of Madrid application, enters the information in its database and determines whether the applicable Madrid filing requirements are met. If the application does not conform to the established requirements, WIPO, depending on the nature of the deficiency, will contact either the trademark owner or office of origin.

When WIPO confirms that the necessary Madrid requirements have been met, it registers the mark and publishes it in the WIPO Gazette of International Marks. The International Bureau notifies each contracting party in which protection has been requested. The request for protection of the mark in each of the designated contracting parties is treated as if the mark has been deposited directly with the office of that contracting party from the date of the international registration or subsequent designation.  Each designated contracting party has the right to refuse protection within the time limits specified in the Agreement or Protocol. If the refusal is not notified to the International Bureau within the applicable time limit, then the request for protection of the mark in the designated contracting party is taken as granted.  In contrast to the Agreement which establishes a strict twelve-month period for notifying WIPO of a refusal,  the Protocol allows a national office of up to eighteen months to consider a request for national extension if a declaration is made to that effect . This period of time may be extended in countries having an opposition system if, within the initial eighteen-month period, the office notifies WIPO of the possibility of a refusal based on an opposition.  As the request for extension is processed, the national office may require the applicant to provide additional information or to respond to office actions. The applicant, at this point of time, will most likely need to appoint a local trademark attorney for such communication with the national office.  


The protection in designated countries ceases to exist with the expiry of the Madrid registration. The Madrid registration is valid for twenty years under the Agreement  and ten years under the Protocol . The renewal which is also for a term of twenty years under the Agreement  and ten years under the Protocol  is accomplished through a single filing with WIPO.  It may be noted that both the Agreement and Protocol are silent on the number of renewals of a mark. The Madrid System does not permit an owner to amend the mark for obtaining protection in a member country. In contrast, national filings may allow the applicant to amend the mark for avoiding conflicts.

Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his very second year in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property. Winner of almost a dozen essay competitions in his law school days, he was involved in various research and policy initiatives relating to intellectual property. His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property.

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