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The Madrid Protocol: International Registration of Trade Marks

Ever since the advent of globalisation, where almost every company has operations in some countries, it is important that your mark is protected internationally. But the task of registering your mark individually in different countries can be very time and money consuming.

Surprisingly, the solution to this problem was first available along back as 1891 in the form of “Madrid Agreement Concerning the International Registration of Marks”.

The Madrid Agreement enabled the nationals of member countries to protect their trademark in any or all of the other member countries.

It provided for a one-stop shop where a single international application needs to be filed, in a single language, by paying single fees in one currency resulting in a single registration with one renewal date, but protection in all of the member countries you applied for.

In 1989, another such treaty was known as the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks” was adopted in Madrid on June 27, 1989. The Madrid Agreement and the Madrid Protocol are two separate treaties, and together they are known as the “Madrid System.”

The Madrid Protocol

The Madrid Protocol is a much stronger agreement regarding its member strength. Presently there are 103 members of the Madrid Protocol. Together all the members to the Protocol are called the ‘Contracting Parties’.

Only those states who are also a party to the Paris Convention for the Protection of Industrial Property can become a member of this Protocol. India acceded to the Protocol on April 8, 2013, and it entered into force in India on July 8, 2013.

Any person (or business), who is domiciled or is a national or has an industrial or commercial establishment in any of the ‘Contracting Party’ can secure protection in any of the other contracting parties.

The Madrid System is overseen and governed by the International Bureau of the World Intellectual Property Organization (WIPO).

The application is not filed directly to the International Bureau but needs to be filed via an intermediary which is basically the trademark office of any one of the Contracting Parties.

The applicant must either have a registered trademark in any of the member countries (which is called ‘basic registration’) or must have filed an application with the trademark office of a member country (called ‘basic application’).

Based on this basic registration or basic application, an international application may be filed in which the applicant chooses the countries in which he wants his trademark to be protected.

An important point to note here is that under the Madrid Agreement, 1891, an international application could only be made once you have acquired registration in any of the member countries.

But under the Madrid Protocol, 1989, you need not to wait till your mark gets registered in a member country, and you can simultaneously file an international application immediately after filing the basic application.

The International Bureau publishes the applications received in a periodic gazette issued by the Bureau, and they also provide the trademark office of each of the contracting parties with a certain number of free copies of the gazette.

Although the applicant needs to mention the member countries in which he wished to protect his trademark while he is filing the international application, the Protocol also gives the opportunity to extend such protection to other contracting parties after the international registration has been granted.

Effect of International Registration

The effect of international registration of the mark is the same as if the mark had been registered in the office of the contracting party and it acquires all the rights and benefits which a national registration has.

So, for example, after the International Bureau has notified the application of a certain mark and if any of the contracting parties refuse to register the mark, the applicant shall have all the remedies that are available to a national application in that jurisdiction.

Generally, contracting parties have twelve months to notify the refusal of the mark, but the protocol provides for the extension of these twelve months to eighteen months period if the contracting party has made a declaration to that effect.

The period for which international protection subsists is same as it is in India, i.e. ten years from the date of international registration which may be further extended for a period of ten years by filing an application for renewal and paying the prescribed fees.

The protocol has made the international trademark registration process very uniform and simple. The applicant does not need to follow different application procedures of different jurisdiction or send out applications individually to each country he wants protection in or pay them individually.

Just one single application is enough to secure international trademark protection, and the costs of registration also reduce substantially for the applicant.