MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF TRADEMARKS

TABLE OF CONTENTS

• Introduction

• Objectives

• Madrid Agreement

• Madrid Protocol

• Comparison

• Procedure

• Advantages and Disadvantages

• Indian Perspective

• Conclusion

Registration at National Office

Registration at Regional Office

International Registration

INTRODUCTION• Due to globalization, focus is on international

market.

• Registration in Foreign Jurisdictions done by:

Madrid System

Madrid Agreement Concerning International

Registration of Marks

Protocol Relating to the Agreement

OBJECTIVESSimple, low cost

and effective system.

Facilitates obtaining of

protection for marks.

Since international registration is equivalent to a

bundle of national

registrations, subsequent

management of protection is

easier.

However, it is an INTERNATIONAL REGISTRATION FILING system, not intended to be a harmonization treaty or a registration treaty.

MADRID AGREEMENT

Features De-merits

Fixed Fees

Refusal Period

Working Language

Central Attack

20 year protection

Country of Origin

In 1891, under Article 19(2) of the Paris Convention, France, Switzerland, Tunisia, Spain, Belgium, entered in to an Agreement to achieve unification in the registration procedure of Trademarks on a global platform

MADRID PROTOCOL

• On June 27, 1989, during the Diplomatic Conference held in Madrid, the “Protocol relating to the Madrid Agreement Concerning the International Registration of Marks” was signed. The Protocol entered into force on December 1, 1995 and became operational on April 1, 1996.

• The Protocol does not purport to supersede the Agreement; the systems exist in parallel.

COMPARISON:

Madrid Agreement

Member : States

Basic Registration

Time for Refusal – 12 months

Fixed Fees

Working language- French only

Dependency

Madrid Protocol

States and Organizations

Basic Registration/Application

Time for Refusal – 18 months or extended even further

Individual Designation Fees

French, English, Spanish

Possibility of transformation

PROCEDURE

Office of Origin

International Bureau

Designated Contracting Party

Registration/Refusal

FEATURES OF FILING PROCEDURE

18 months

MERITS AND SHORTCOMINGS:

• One application, one fees, one language

• Less administrative hassles• Allows the right holders to target

national, regional or global market

Merits

• Limited members• No amendment of mark allowed• Consequence of ‘Central Attack’Shortcomings

INDIAN PERSPECTIVE

• Union Cabinet ratified India’s accession to the Madrid Protocol in 2007.

• Amendment to Trademark Act, 1999 and Rules.

• The Bill prescribes a period of 18 months within which a trade mark has to be registered.

• If an international registration originates from India the registered proprietor or applicant may make an international application on a prescribed form. If the person holds an international registration, he may make an international application on the prescribed form for such registration to any other contracting party.

CONCLUSION

• The Madrid Protocol has no doubt been a success.

• Amendments required.

• INDIAN PERSPECTIVE:

• Caution to avoid unnecessary predicaments.