For businesses all over the world, brand equity and recognition have become vital aspects of product/ service value. To protect brands in the global market, the trademarks are required to be protected in multiple countries where the brand is prevalent. One can file applications for registration of the trademark in multiple countries individually, or apply through the Madrid System for trademark registration.
The Madrid System, as it is commonly known, is a system for streamlining the process of filing applications for trademark registration internationally. The Madrid System is based on 2 main documents, that is, the Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement (1989). It mandates the functioning of international filing of trademark applications in the Member Countries.
Samoa became the newest addition in the list of members of the Madrid Protocol on 4th of March, 2019. Canada also has accepted the Madrid Protocol System and will be a part of it from 17th of June, 2019.
Prior to this treaty, separate applications for the protection of trademarks were being filed individually in countries where the marks were desired to be protected. Further, these applications were required to be in accordance with the domestic laws of those countries and separate fees were to be paid in each country in its respective currency. Even after the registration was granted, it would be a difficult task to keep a track of their timely renewals. This process proved to be tedious and expensive.
The Madrid Protocol facilitated registration of a mark in almost 80% of the countries in the world including the European Union and African Intellectual Property Organization. Madrid Protocol allows individuals and corporations to register their trademarks in more than 110 countries through a simple process of:-
- filing a single application;
- in one language; and
- Paying fees through one currency.
The applicant can designate countries where it seeks to protect the trademark. After submission of application, it is for the designated countries to which a request has been made for protection of the mark, to decide whether a mark is eligible for protection or not in accordance with their domestic legislation. Madrid Protocol allows addition of new jurisdictions in the existing list of designated countries at any time the applicant may choose or if and when new jurisdictions subsequently join the Madrid Protocol.
However, for an application through the Madrid system if there is refusal, withdrawal or cancellation of the basic application or basic registration within 5 years of the registration date of the international registration leads to the refusal, withdrawal or cancellation of the international registration also.
India joined the Madrid Protocol in 2013 and amended its Trademarks Act, 1999 to include Section 36 A to 36 G to inculcate the provisions of the Madrid System into its domestic system and to align the Act with the Madrid System.
Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan
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