DECODING THE MADRID PROTOCOL: TRADEMARK FILING AND FACILITATION

The Madrid Protocol, also commonly known as the Madrid System, is a crucial international mechanism for simplifying trademark registration across?numerous countries around the globe. The Madrid System is governed by the?Madrid Agreement Concerning the International Registration of Marks of 1891 treaty?and subsequently?the Protocol Relating to the Madrid Agreement which was concluded in 1989.

The Madrid System serves as a centrally governed mechanism for obtaining several trademark registrations in different jurisdictions. Unlike the European Union trademark system, it does not establish a single unified registration of marks?across many jurisdictions, rather, applicants submit a single worldwide trademark application and pay a single set of fees to seek protection in any or all of the system's member countries. Each jurisdiction has the power to grant the application. When a specified country's trademark authority awards protection, the mark is protected in that jurisdiction exactly as if that office had registered it.

The International Bureau of the United Nations World Intellectual Property Organization (WIPO) in Geneva, Switzerland, administers the Madrid System. As of August 01, 2023 the Madrid Union currently consisted of 115 members including both States and intergovernmental organizations that are contracting parties to the Madrid Protocol, covering the territories of 131 countries, collectively known as the Madrid Union, who account for more than 80% of global trade.

IMPACT OF THE MADRID SYSTEM AND THE TRADEMARK REGISTRATION PROCESS:

The Madrid Protocol provides a user-friendly, cost-effective, and speedy set of procedures in a single application, allowing a brand to defend itself on an international basis. The Madrid Protocol does not however apply to all states. As a result, for countries who are not parties to the Madrid Agreement Concerning the International Registration of Marks the applicant must file multiple applications with the body to obtain trademark protection.

INTERNATIONAL TRADEMARK REGISTRATION PROCEDURE:

1.??????? Single filing for protection of mark across various jurisdictions:

Previously, an international registration had to be registered both in the home country and at the trademark offices of all countries where protection was sought. After several nations adopted the Madrid Protocol, the laborious task of filing has been minimized, and only a single application is required to register the trademark.

For instance, an international petition for a mark?can be filed digitally at https://www.ipindia.gov.in/trade-marks.htm or physically in the applicant's home country. Following that, an international trademark application can be filed on the IP India website, indicating which member nations the applicant wishes to protect. An application can only be filed in English, French, or Spanish under the Madrid Protocol.

2.????? Notifying designated countries:

The WIPO which is?a global forum for IP services, policy, and information, will reach out to the Madrid Union members regarding the application of international registration, and the member states must adhere to a time constraint of 18 months to raise their objections with regard to the application of registration of a trademark.

3.????? Registration of the mark:

If no objections are received within 18 months of the international registration date, the application will be considered registered by default. The trademark is considered awarded and protected in the member states after successful registration. Furthermore, it can be renewed every ten years to extend the trademark's protection.

ADVANTAGES OF THE MADRID SYSTEM

1.??????? No language barriers:

An applicant may choose any of the three official languages used by the Madrid Protocol, including English, French, and Spanish. All three languages are widely spoken and acknowledged, allowing applicants to choose a language from among the member states that best suits their needs.

2.????? Cost-effective:

The Madrid Protocol is designed in such a way that it alleviates the burden of multiple filing, as mentioned above, and paves the way for the efficient way of filing once. The single filing also leads to a reduction in the applicant's expenditure, which is one of the major reasons for an applicant to choose the Madrid Protocol.

3.????? Can easily file trademarks in multiple jurisdictions:

The Madrid Protocol was created to simplify the registration process in all countries where the applicant wants to protect their trademark. It establishes an agreement under which only one application and a set price is required to obtain protection in the designated member states. As a result, the Madrid Protocol created the filing of trademarks through a single application, one attorney/lawyer, or representation, so reducing the time-consuming responsibilities of filing protection in each member country. This allows the brand owner to protect their mark in different jurisdictions without having to go through a lengthy procedure.

4.????? No effect on mark from refusal in one country:

If the said?mark is refused by WIPO in one country, applicant may?choose whether to respond to the objection or allow the mark to be refused in that country. Validity of such a mark shall not be affected in other countries.

DISADVANTAGES OF THE MADRID SYSTEM

1.??????? Timeframe:

The entire process, starting from registration through the Madrid System to getting the mark approved may take over and above 18 months if objections are received. Generally registering a mark through the national procedure so available in the applicant’s home country is much quicker than the Madrid System.

2.????? Registered mark in home country:

To file a mark under the Madrid Agreement, the applicant must have a registered trademark in the country where the person holds their citizenship or is incorporated in (which must be a member of the Agreement) or at least a filed mark, as this will be considered a basic mark. It should be noted that if the basic mark is not registered for whatever reason, any marks submitted under the Madrid Agreement would be cancelled as well.

?3.????? Jurisdictions not being signatory to the Madrid Agreement:

?Some countries (like China) do not recognize WIPO certificates of registration, in which case you must apply to the National Trademark Office and pay an additional price.

?4.????? Cost of sale:?

If for any reason whatsoever the mark holder decides to sell, their WIPO-registered trademarks in some countries, then depending on the laws of the said country, the seller will first have to convert the said mark to a local mark, which is an expensive and time-consuming process.

CONCLUSION

The Madrid System offers a user-friendly, cost-effective, and compliant interface to assist brand owners in protecting and ensuring their brand from potential dangers. The System's widespread acceptance by member states and market participants has repeatedly proven to be highly effective.

However, it's important for entrepreneurs and companies to understand that registering a trademark only in the place of incorporation of the company may not be sufficient. Trademarks should be registered in all countries where the company has business or operations to prevent future complications and infringements. Failure to adequately protect a trademark in all relevant jurisdictions can jeopardize future business plans. Notable multinational corporations like Apple, Microsoft, and Nike have all utilized the Madrid Protocol to secure their trademarks globally. This ensures broader protection and provides brand owners with additional stability and security.

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Author – Akshat Morakhia (Associate – Legal Services)