NEED FOR AN INTERNATIONAL TRADEMARK
A Trade mark refers to a mark which when represented graphically can distinguish the goods and services of one person from that of another person.[i] As the business get online, it is important that the sanctity of one’s registered trade mark is maintained. Anyone with a working internet anywhere in the world can access one’s trade mark and copy it and since trademark is a territorial law, one won’t be able to protect his/her mark where it is not registered.
To protect one’s trade mark internationally, there are basically two methods. The first is to file a trademark application with the trademark office of each country where one wants it to be protected. The second is the cost effective and time efficient- the Madrid System.
The Madrid System (hereinafter referred as the system) is a primary system for international registration of trade marks and is managed by World Intellectual Property Organization (WIPO). The countries that follow Madrid System are together known as the Madrid Union (hereinafter referred as the Union). The union currently has 108 members that cover 124 countries.
The System is comprised of two treaties:
1. Madrid Agreement Concerning the International registration of Marks (Concluded in 1891 and entered into force in 1891), and
2. Protocol Relating to the Madrid Agreement (Came into operation on 1st April 1996).
APPLYING FOR AN INTERNATIONAL REGISTRATION FROM INDIA
The Trademark Office from where an application for international registration has to be made is called as the ‘Office of Origin’ while the trademark offices to which the applications are designated are called as ‘Designated Contracting Party/Parties’. For India, the Indian Trademark Registry (hereinafter referred as TMR) is the Office of Origin. An applicant may visit https://ipindia.gov.in/ and through comprehensive e-filing portal for trademark, file MM2(E) form for International Application via IAOI (International Applications Originating from India) tab.
The basic requirements for making an international application from India is to have:
1. The nationality of India, or
2. The domicile of India, or
3. The applicant should be having a real and effective business/commercial establishment in India.
In addition to these basic requirements, the applicant must have either applied for a national trademark or must have a registered trademark in India. In Madrid perspective, the former is called a ‘Basic Application’ and the latter is called a ‘Basic Registration’.
An applicant starts with filing an MM2(E) form online via the system complying with all the necessary requirements and documentation and pays a fee of INR 2000 as a handling fee to TMR. The TMR then proceeds to verify the applications and if any deficiency in application is found, the applicant gets 1 month to rectify the deficiencies. Upon finding no deficiency or upon receipt of the rectification, the international application is certified and transferred to International Bureau (IB) of WIPO and the amount to be paid as a fee by the applicant in the respect of international application is communicated to him/her. The fee is paid directly to the IB of WIPO in Swiss Francs (CHF). The IP then formally examines the application, registers the mark in the International Register and publishes the same in the Gazette. It also issues a certificate of registration and notifies the designated contracting parties. If before registration, IB finds any deficiency, it duly notifies the applicant and TMR regarding the same and requests to rectify the deficiency within prescribed time.
The offices of designated contracting parties then determine the scope of protection of the international application in accordance with their domestic laws. The substantive examination by the offices is completed within 12-18 months of receiving the notice of international registration of the mark.
BENEFITS OF MADRID SYSTEM
· A single international application has to be filed instead of separate applications for different countries.
· Since there is a single application, the barrier of language is lifted. E.g., a person in India filing the trademark application in English language need not know French if he intends to apply for Trade Mark in France.
· It is economically beneficial since one international application leads to a single payment instead of paying to the individual Trade Mark offices and engaging in currency- conversion related expenses.
· Usually, a local representative is needed where Trademark protection is sought by filing directly to national/regional Offices. With the Madrid System, the requirement to appoint a local representative arises only in the situation where the applicant/holder receives a notification of a provisional refusal and the applicant/holder intends to contest this decision before the Office concerned.
· Applications via the Madrid System are also less time consuming. The applicant need not wait for the Office of each Contracting Party to take a decision to protect the mark If no refusal is notified by an Office within the applicable time limit, the mark is automatically protected in the Contracting Party concerned.
· Any change of information such as name, address, etc. of the holder may be recorded with effect for several designated Contracting Parties through a single, simple and centralized procedure with the International Bureau of WIPO and with the payment of a single fee.
· There is only one expiry date and only one registration to renew, which makes for easy portfolio management.
· Trade Mark Offices can focus on substantive examination as the compliance with formal requirements, classification of goods, publication of marks etc. are undertaken by the International Bureau.
· The Trademark Offices are compensated for the work that they perform. The individual fee collected by the International Bureau is transferred to the Contracting Parties in respect of which they have been paid. The complementary and supplementary fees are distributed annually among the Contracting Parties not receiving individual fees, in proportion to the number of designations made of each of them.
Madrid System has definitely stood the test of time for the last 26 years it has been in force. This is evident with new businesses going global day by day and more nations joining the Madrid Union every year (the latest being Pakistan, there the protocol will come into force on 24th May 2021). The System has proved itself to be not just economically viable for the applicants but also efficient in terms of time taken for multiple international registrations. Today, one of the only challenges that Madrid System faces in respect to India is that the Indian TMR already suffers from time delays in respect of national filings owing to the workload and pendency. And with the Madrid protocol, this workload has only increased as it has become difficult for TMR to deal with national and international applications simultaneously. With more businesses going international day by day, the TMR will have to increase its efficiency to be in race with the demand.
[i]The Trade Marks Act, 1999, s. 2(1)(zb): “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.