The blog discusses the importance of protecting trademarks in foreign countries and the role of the Madrid System of International Trademark Registration in simplifying the process.
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With the expansion of international trade and commerce, the need of protecting trademarks has become increasingly important to commercial enterprises, not just in their own home country but also elsewhere, in other foreign countries. However, up until the introduction of the Madrid System of International Trademark Registration, the only way to protect a Trademark in other countries was by filing a separate Trademark Application there.
The practical difficulty of doing so, by adhering to separate laws, written in separate languages, and paying the fee in separate currencies, arose the necessity of having an international agreement whereby a single framework can be provided for International Trademark Registration.
This gave birth to the Madrid Agreement and Protocol facilitating international trademark registration in one or more member countries by filing a single application in the home country. As a result, the cumbersome procedure of filing separate applications, in different languages and then paying the fees in different currencies stood totally eliminated. Let’s have a deeper look at what the Madrid system of International Trademark registration really entails!
How to get International Trademark Registration?
International Trademark Registration is governed by two separate treaties, namely the Madrid Agreement which dates back to 1891, and the Madrid Protocol dating back to 1995 (came into effect on April 1, 1996). It is under these two treaties that the Common Regulations of the Madrid System have been drafted and together, these three provide a complete framework of International Trademark Registration.
Any country which is a member of the International Convention for Protection of Intellectual Property, also called the Paris Convention, can accede to the Madrid System of International Trademark Registration. The concerned member state has the option of becoming a party either to the Agreement or to the Protocol or both. India decided to become a party to the Protocol, and acceded to it on 08.07.2013.
The Madrid System of International Trademark Registration enables the nationals of those member states which are party to the Madrid Protocol, to obtain international trademark protection in designated countries. This can be done within 18 months of filing a single application in the home country, which is later transmitted to the designated countries through the International Bureau of the World Intellectual Property Organization (WIPO), a Geneva-based specialized agency of the United Nations administering the Madrid system.
What is the Madrid Protocol for International Trademark Registration?
The Madrid Protocol has been drawn from the Madrid Agreement which has been in force since 1891. However, the Protocol itself was adopted almost 100 years later in 1989 and entered into force on April 1, 1996. It introduced several new features into the already existing international trademark registration system under the Madrid Agreement with the goal of facilitating more and more countries to accede to the Madrid system as seamlessly and effortlessly as possible.
Madrid Protocol is constituted by member States, who are parties only to the Madrid Agreement, States and organizations who are party only to the Protocol and States party to both Madrid Agreement and the Protocol.
Is Trademark Registration under the Madrid Protocol possible in India?
The amendment to the Indian Trade Marks Act, 1999 has made it possible for trademark owners in India to protect their trademarks internationally under the Madrid system, if not in all the member countries to the Madrid Protocol, at least in those countries with whom the owner of the trademark in India has established strong trade relations.
India had acceded to the Madrid Protocol w.e.f. 08.07.2013. This has enabled trademarks owners from India to seek International Registration of their trademarks and secure protection in such member countries as are designated by them in the application. In reciprocity, trademark owners in member countries of the Protocol may seek protection to their marks in India. A list of countries who are parties to the Madrid Agreement, parties to the Madrid Protocol and those who are parties to both the Agreement and Protocol is mentioned in the Appendix 60A.
Conclusion
The Madrid System of International Trademark Registration, established through the Madrid Agreement and Protocol, provides a convenient and efficient way for commercial enterprises to protect their trademarks in multiple countries. Prior to the introduction of this system, businesses had to file separate trademark applications in different countries, which involved dealing with various laws, languages, and currencies.
The Madrid System simplifies the process by allowing applicants to file a single application in their home country and obtain trademark protection in designated member countries. With the accession of India to the Madrid Protocol, trademark owners in India can now seek international registration of their trademarks and secure protection in countries with which they have established strong trade relations. This reciprocal arrangement benefits both Indian trademark owners and owners from member countries of the Protocol.
FAQs
Q1: How does the Madrid System of International Trademark Registration work?
The Madrid System allows trademark owners to obtain international trademark protection by filing a single application in their home country, which is then transmitted to designated countries through the International Bureau of WIPO.
Q2: What is the difference between the Madrid Agreement and the Madrid Protocol?
The Madrid Agreement, dating back to 1891, established the foundation for international trademark registration, while the Madrid Protocol, adopted in 1989, introduced new features to facilitate more countries’ accession to the system.
Q3: Can any country join the Madrid System?
Any country that is a member of the Paris Convention for the Protection of Intellectual Property can accede to the Madrid System by becoming a party to the Agreement, the Protocol, or both.
Q4: How long does it take to get an international trademark registration?
International Trademark Registration under the Madrid Protocol is granted within 18 months from the date of application for this purpose in the Home Country.
Q5: What are the benefits of international trademark registration under the Madrid System?
Madrid System simplifies the process of getting International trademark registration by eliminating the need to file separate applications in different countries. It also provides trademark owners with the convenience of filing a single application to get Trademark Registration in 130 member countries party to the Madrid Protocol.