Madrid Protocol in India: International System for Registration of Trade marks
The Madrid system offers a trade mark owner the possibility to have his trade mark protected in several member countries by simply filing one application directly with his own national or regional trade mark office.
Madrid Protocol provides for International Registration of Trade Marks and its objectives are as follows:
- It facilitates the obtaining of protection for marks (trade marks and service marks) and from the date of international registration, the protection of the mark in each of the designated contracting parties is the same as if the mark had been the subject of an application for registration filed direct with the Office of that contracting party.
- As international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier. As a result of International registration, there is only one registration to renew, and changes such as a change in ownership or in the name or address of the holder, or a limitation of the list of goods and services, can be recorded in the International Register through a single procedural step.
Advantages of the System
- After registering the mark, or filing an application for registration with the Office of origin, only one application needs to be filed in one language (English, French or Spanish) and one set of fee is to be paid instead of filing separate applications in the trade mark Offices of the various contracting parties in different languages.
- The trade mark holder does not have to wait for the Office of each contracting party in which protection is sought to take a positive decision to register the mark; if no refusal is notified by an Office within the applicable time limit of 18 months, then the mark deemed to be protected in the contracting party concerned.
- Changes subsequent to registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services may be recorded with effect for several designated contracting parties through a single simple procedural step and the payment of a single fee. Moreover, there is only one expiry date and only one registration to renew.
Applications using the Madrid System can now be filed from India.
Provisions for International Registration under the Trade mark Act, 1999
Pursuant to the Protocol, India has taken significant steps towards the alignment of its intellectual property regime with the global norms through the Trade Mark (Amendment) Bill, 2009 which has led to the inclusion of a new chapter (Chapter IV A) in the Trade Marks Act which exclusively deals with procedural and statutory requirements for international registration of marks.
Sections 36A to 36G of the Trade Marks Act entail the provisions with respect to international registration of marks under the Madrid System. Under this provision, on receipt of notification from International Bureau with respect to a particular mark, the Registry will examine the mark under the provisions laid down under Sections 9, 11, 21, 63 and 74 of the Act and thereafter accordingly issue necessary directives (advertise or refuse) the application and apprise the International Bureau with respect to the same within 18 months from the date on which it received the notification.
Guidelines for Functioning under the Madrid Protocol
The Controller General of Patents, Designs and Trade marks (CGPDTM) has published guidelines under the Madrid Protocol. The Guidelines inter alia provides for a checklist to be adhered to by applicants while filing an international application with the Trade mark Registry and also lays down a standard protocol to be followed by foreign applicants while designating India in their International Application. The Guidelines have been divided into two parts wherein PART A deals with the responsibilities of Indian Trade Marks Office as the Office of Origin detailing the fees, procedure and duration of filing thereto and PART B deals with the responsibilities of Indian Trade mark Office as the Designated Contracting Party detailing the procedure to be followed for dealing with the International Application from the applicant of another contracting state.