International Trademark Registration
Madrid System of International Trademark Registration – With the expansion of international trade and commerce, the need for obtaining protection to trademarks not only in one’s own home country but also in other countries, has become increasingly important to commercial enterprises. Having regard to the practical difficulty in filing applications for registration of trademarks in each country, having different laws, language and fee payment in different currencies, an international agreement gave birth to the Madrid Protocol administered by a specialized UN agency (WIPO). This Protocol facilities international trademark registration and provides a means for securing protection to such marks in one or more member countries, under the Madrid system, on the basis of a single application to be filed in the office of origin. The cumbersome procedure for filing an application in different languages of the countries concerned and payment of fees in the currencies of the respective countries stands totally eliminated. It can be achieved by a single application in one language and payment of a single fee.
The amendment to the Trade Marks Act, 1999, in India, has made it possible for trademark owners in India to secure protection to their trademarks, if not in all the member countries to the Protocol, at least in those countries with whom the owner of trademark in India has established strong trade interests.
The International Bureau of the World Intellectual Property Organization (WIPO) – a Geneva-based specialized agency of the United Nations – administers the system of international registration of trademarks under the Madrid system.
The Madrid Agreement is in force since 1891. The Madrid Protocol Was adopted almost 100 years later in 1989 and which entered into force from April 1, 1996, introducing new features governing the system of international registration of marks, facilitate countries to accede to the Madrid system. However, both the Agreement and the Protocol, together with Common Regulations, continue to be in existence. These two separate treaties are constituted by member States, who are parties only to the Madrid Agreement, States and organizations party only to the Protocol and States party to both Madrid Agreement and the Protocol.
By virtue of being a party to the Paris Convention for Protection of Industrial Property, it is open to India to become a party to the Agreement, Protocol or both.
India has acceded to the Madrid Protocol w.e.f. 08.07.2013. This enables trademarks owners from India to seek International Registration of their trademarks and secure protection in such member countries as are designated by them. 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 in the Appendix 60A.
The international registration of marks is governed by two treaties, namely Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. Under these treaties, common regulations have been made.
Any country which is a member of the International Convention for protection of industrial property [Paris Convention] can accede to the Madrid System. It is open to a contracting state to become 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 from 08.07.2013.
At present, a person desirous of obtaining registration of his trademark in other countries has to make separate applications in different languages and pay different fees in the respective countries. Since there was no provision under the Trade Marks Act, 1999 to facilitate Indian nationals to secure simultaneous protection of trademarks in other countries, suitable amendments have been made to secure the objective. This will also facilitate nationals of the Madrid system to obtain protection of their trademarks likewise in India.
Madrid system of international registration enables the nationals of the Member countries of the Protocol to obtain protection of trademarks within the prescribed period of 18 months by filing a single application with one fee and in one language in their country of origin, which in turn is transmitted to the other designated countries through the International Bureau.