India: Madrid System Of International Registration Of Trademarks

The use of the Madrid System, by the trademark owners, to protect their trademarks abroad has obligated the staff of WIPO to organize a seminar and invite speakers to increase awareness and practical knowledge among the independent and in-house trademark agents as well as attorneys.¹ The Seminar will focus on all aspects of the international registration procedure and relevant administrative and legal questions. It aims at increasing awareness and practical knowledge of the system among actual and potential users, whether in industry or in private practice.

Madrid System of International Registration of Trademarks is governed by the Madrid Agreement of 1891 and the Madrid Protocol. The Madrid System offers the possibility to obtain trademark protection in the countries of the Madrid Union by filing a single international application. The first international trademark registration dates from 1893 and belonged at that time to Swiss chocolate producer Russ Suchard et Cie, but is no longer in effect.  The oldest international trademark registration which is still in effect as a result of multiple renewals belongs to Swiss watchmaker Longines.  This trademark was also first registered in 1893. The Madrid Protocol, which became operational in 1996, introduced several features including the possibility for applicants to submit applications in English and for trademark offices of contracting parties to extend the period within which refusals should be notified.  These features made the system more flexible and attractive to a larger number of countries.  The total number of contracting parties to the Protocol is 67 and the overall current membership of the Madrid system is 78 (77 countries plus the European Community).

The international trademark system administered by WIPO offers a trademark owner the possibility of having a mark protected in up to 77 countries and the European Community (EC) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection.  Thereafter, the international registration can be maintained and renewed through a single procedure at WIPO.

An application for international registration must be presented to the International Bureau through the Office of origin. Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. The International Bureau notifies each Contracting Party in which protection has been requested, whether in the international application or subsequently.

The protection of the mark in each of the designated Contracting Parties is the same as if the mark had been deposited directly with the Office of that Contracting Party and is from the date of the international registration or subsequent designation.

Each designated Contracting Party has the right to refuse protection, within the time limits specified in the Agreement or Protocol. Unless such a refusal is notified to the International Bureau within the applicable time limit, the protection of the mark in each designated Contracting Party is the same as if it had been registered by the Office of that Contracting Party. The time limit for a Contracting Party to notify a refusal is generally 12 months. Under the Protocol however, a Contracting Party may declare that this period is to be 18 months (or longer, in the case of a refusal based on an opposition).

An international registration remains dependent on the mark registered or applied for in the Office of origin for a period of five years from the date of its registration. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation, through refusal or withdraw of an application or through non-renewal, within this five-year period, the international registration will no longer be protected. After the expiry of this period of five years, the international registration becomes independent of the basic registration or basic application. An international registration may be maintained in force indefinitely by the payment, every 10 years, of the prescribed fees.

International registration has several advantages for the owner of the mark. In summary, the main advantages for trademark owners consist of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their marks abroad. International registration is also to the advantage of trademark Offices. For example, they do not need to examine for compliance with formal requirements, or classify the goods or services, or publish the marks. Moreover, part of the fees collected by the International Bureau is transferred to the Contracting Parties in which protection is sought. Furthermore, if the International Registration Service closes its biennial accounts with a profit, the proceeds are divided among the Contracting Parties.

Trademarks are a key component of any successful business marketing strategy. They allow the organizations to identify, promote and license their goods or services in the marketplace and also to distinguish these from those of their competitors. In addition to distinguishing and advertising, a trademark symbolizes the promise of a quality product and trademark protection hinders unfair competitors to take a "free ride" on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. The dilution or infringement of a high-value trademark could prove devastating to a business.

In today’s global and increasingly electronic marketplace a trademark is often the only way for customers to identify & distinguish a company’s products and services. Exporters often realize the importance of registering their trademarks abroad once they are faced with counterfeiters or once they are accused of infringing the rights of others. Registering a trademark in foreign markets gives a company the exclusive right to commercialize its products in those markets. This provides a basis to stop counterfeiters. Registering a trademark abroad also provides the opportunity to license the trademark to others (often in conjunction with other IP rights) or may be the basis for a company’s franchising or merchandising strategy.

© Lex Orbis 2006

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