INTERNATIONAL TRADEMARK REGISTRATION UNDER MADRID PROTOCOL

INTRODUCTION

We live in a world where one in every five individuals is involved in the international trading business. And being aware of the fact that international trading is not just about importing and exporting goods. There are legalities involved, a lot of legal work comes in handy when we talk about having business overboard. One thing that every businessman would want is, to be known, be it a logo that represents their company or a picture, slogan, or anything that is related to their company or the business, for e.g. Nike being a huge brand over the years has represented itself by just a simple tick and a three-word slogan that says, “Just do it”. And is globally known for its products. Here, Nike’s tick and the slogan would come under a trademark or a globally registered trademark. Nike is a huge company is known worldwide, but a company that just hopped in the global race should always have a trademark registered. A trademark should first be registered nationally and as important as the registration is national; it is equally important to register your trademark globally. International trademarks are registered under the Madrid protocol. To understand the importance of the Madrid protocol one should be fully aware of it either through the attorney or being educated about it.

WHAT IS THE MADRID PROTOCOL?

Very often Madrid protocol is misunderstood by the term international trademark. We need to be aware of the fact that there is no such term as an international trademark. The correct term is the Madrid protocol, all the trademarks are registered globally are covered under the Madrid protocol. But how do we define the Madrid protocol? Madrid protocol in very simple words is said to be an international treaty that is specifically made to simplify the process of registration of trademarks internationally. There are two international treaties, i.e. -

1. The Madrid Agreement

2. The Madrid Protocol

Both of these treaties deal with the registration of trademarks on a global level. Madrid protocol has simplified the process for people and has got less to deal with the approvals. Anyone who wants to register their business globally must register under the Madrid protocol. It is a very simplified process as and as English is not recognized globally, the application can be filed in your home language. While applying for the trademark registration under the Madrid protocol you should be specific about the countries you’d be applying for, for e.g. if you plan on doing business in Russia, France, or Australia, you have to apply to the specific countries. And while applying one should be aware that every country will have its own legalities and will go through the application process according to their laws. Let’s consider that the trademark given is not accepted in any one of the countries one has applied for, that will not make any difference with respect to other countries, for e.g. if your trademark is not accepted in Australia doesn’t necessarily mean that France won’t approve it if the trademark goes through all the necessities required it will be approved in France. Again, in the end, all comes down to your cognizance and knowledge about the functioning of this particular system.

HOW DOES THE MADRID PROTOCOL WORK?

Three simple stages:

STAGE 1

In order to submit, you must first file a basic application within your home country. For e.g. if you are an Indian, you should file your registration with the national trademark office of India. As the initial process begins, the trademark is being verified via India’s trademark office only. And as the office certifies the international application it is then forwarded to the WIPO and then gets in the process of the international registration of a trademark.

STAGE 2

Stage 2 considers the formal examination and analyses the trademark. It then becomes a registered mark in the international register and gets published in the international registration in the gazette. After this process is completed, a certificate is issued with respect to the registration and notifies the designated contracting parties.

STAGE 3

Stage 3 is time taking as it is bound to complete a time period of 12/18 months. As it reaches the third stage i.e. the international stage, the documents will be verified by the substantive examination. And once you are through the third stage you get your trademark registered globally.

As convenient and simplified the process sounds it is Equally important for one to be fully aware of the Indian trademark laws, all the countries that are covered under the Madrid protocol, as not all countries would be part of the Madrid protocol, and henceforth the registration will not be granted.

To know more, about International Trademark Registration under Protocol-

MADRID PROTOCOL IN INDIA

The functioning of the Madrid system comes under the Madrid agreement (1891) and the Madrid protocol (1989). It is modulated by the international bureau of the world intellectual property organization located in Geneva, Switzerland. The system basically introduced to provide convenience for registering trademarks globally as every region is bound to have different systems for trademark registrations.

It is compulsory for a person to register his trademark for protection of his trademark from others. It’s a must to register the trademark at the national trademark office of India. And this is how it gets secured in India first and hence it will be protected. The Madrid system was enabled in India on 12^th January 2018. It enabled the registration of trademarks globally, as India was not a part of this system earlier, it became difficult for Indian citizens to register their trademarks on a global level, as it involved a lot of chaos as there were too many applications and the procedure was time-consuming. As the Madrid protocol was introduced, it became much convenient for the Indian citizens to register their trademarks as the application is filed in one language and it also happens to be our home language so there is no language barrier for applying and it only takes an application for the whole process. India effetely joined the Madrid protocol from July 8^th, 2013. Applications can now be filed in India under the Madrid protocol.

ADVANTAGES AND DISADVANTAGES OF THE MADRID PROTOCOL

ADVANTAGES:

The more we get to know about the Madrid system the more convenient and very simplified system it is, this makes the strongest advantages of the Madrid system. There is one registered trademark under this system. As we choose the language while we apply, it makes our job easier by no translation of the application as well as no dealing with any firm. The protocol can also be made in English, French, or Spanish. In case of any changes in the application, it can be resolved by sending one single document to the international bureau. It also is a convenient and cost-effective method. As there’s only one single application, it prevents the multiplicity of applications. One can also add any other designated country later date. The filing fees are comparatively less than that of international organizations.

DISADVANTAGES:

As convenient and simple it sounds, one should not blatantly trust the whole process unless he/she has complete knowledge about the system. As it has its advantages, unfortunately also has its very own disadvantages. As the Madrid system was enabled in India, the registry was unable to entertain filings as it noticed a lack of manpower. It becomes difficult to look into both national and international filings with very limited manpower. Manpower plays a very important role when it comes to international trading, we could have ample resources but not enough manpower that somewhere could also lack in poor execution of the whole system. Another factor also becomes time, it takes 12/18 months for the process, this might also lead to delay in the national fillings. This system only covers protocol territories. Countries like Mexico, Brazil, and much more of the middle countries are not included in the treaty.

CONCLUSION

As it has come in India it has made the international registration for trademarks convenient for people who want to start their business internationally, and the fact that it has certain disadvantages to it, we certainly can’t deny the fact that how it has helped India with registering the trademarks globally. But being aware citizens of a particular country, we should be aware of the all the legalities be it through your attorney or being educated about it

BY-

HARSHADA PARBHANE