THIS ARTICLE HAS BEEN WRITTEN BY MS. VISHAKHA BAIROLIYA, A FIRST YEAR STUDENT OF LLOYD LAW COLLEGE,GREATER NOIDA, UTTAR PRADESH
The Madrid Protocol is an international agreement designed to simplify the business registration process in many countries. India’s membership of the Madrid Protocol allows businesses and individuals in the country to extend their trademark protection to other member countries. The agreement is administered by the World Intellectual Property Organization (WIPO). In this discussion, we will examine the role of the Madrid protocol in business registration in India.
- About the Madrid Protocol:
Established in 1989, the Madrid Protocol provides a simple and cost-effective way for business owners to protect their trademarks in different countries. It allows applicants to submit international applications in a single language by creating one or more members for trade protection.
- How the Madrid Protocol works:
According to the Madrid System, the applicant files an international application with the trademark office of his country (in this case, the Indian Trademark Registry). The application was sent to WIPO’s International Bureau. A business owner can choose one or more states to seek protection from.
- Advantages for Indian applicants:
- Simplified Process: The Madrid Protocol simplifies the process of obtaining trademark protection in multiple countries. Indian applicants can file a single application instead of dealing with the complexities of individual applications in each country.
- Cost Efficiency: Filing a single international application often proves more cost-effective than filing separate applications in multiple countries. This is particularly beneficial for businesses looking to expand their global footprint.
- Centralized Management: The protocol allows for centralized management of the trademark portfolio. Changes such as renewal or modification can be made through the international registration system.
- Role of Indian Trademark Registry:
Indian Trademark Registry acts as the Office of Origin for Indian applicants. It examines the application and, if there is no objection, forwards the application to WIPO. The applicant chooses the country from which he/she will seek protection, and these countries individually monitor and decide to provide protection.
- Notice for Indian applicants:
- Easy application in India: Before applying internationally, the applicant must apply easy or register in India. International application is subject to existing law.
- Central opposition: If the underlying application is rejected or canceled in India within five years of international registration, protection in other states may also be cancelled. This is called “central attack”. 6. Competition and Restrictions:
- Dependence on Basic Application: The success of international registration depends on the availability of basic application in India. If there is a competition, it could affect the entire international list.
- National Control: Each country is designated as national control and trademarks must comply with their own protection laws. It may be rejected in some countries. 7. Conclusion:
The Madrid Protocol has reduced the burden on Indian business owners to seek international protection. It provides an easy and effective process to expand the service of their trademarks to many countries. Despite the competition, the agreement provides a powerful tool for global brand management. By using the Madrid System, Indian companies can solve the complexities of international business registration and promote international trade and economic growth.
MADRID SYSTEM
The Madrid System provides a system for registering businesses in different regions.
• It is subject to two agreements: the Madrid Agreement Governing the International Registration of Trademarks (known as the Madrid Agreement) and the Madrid Agreement on Related Procedures (Madrid Agreement).
• This agreement is administered by the International Bureau
(IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
ADVANTAGES OF THE MADRID SYSTEM
An international application based on simple application / registration
• Single language (English, French or Spanish)
• Single set of prices in one currency (Swiss franc)
• Registration number and renewal date Book
• Registration can be extended to a specific territory
• Any subsequent changes to the international registration can be registered with the International Bureau
and completed successfully through a process
• There is no need for any rules to be reviewed by the Bureau
Where can the list of Contracting Parties to the Madrid Protocol, be found?
- The list of members can be found at – http://www.wipo.int/export/sites/www/treaties/en/document s/pdf/madrid_marks.pdf
- The list of members is also available on form MM2, the application for international registration of mark.
Amendment, Amendment and Correction of International Registration
• International registration of trademarks under the Madrid System is completed and managed by the International WIPO Office
, is like renewal and amendment of international
registration and correction or amendment. Validity period of international registration
br>WIPO Do
• The validity period of the copy at the International Bureau is 10 years. It can then be extended for a further 10 years upon payment of the necessary fees to WIPO.
• Making applications to international organizations to register changes in the name or address of the international registrant
WIPO Office. The International Office
records the change of name or address in the International Register and notifies the Committee Office appointed accordingly. It also provides information to the registrant and provides information to the Office upon request by the Office.
List of Goods and Services:
When applying for a trademark (domestic or international), the goods and services for which trademark protection is requested must be accurate. These products and services must be classified according to the international classification of Goods and Services (Nice Classification) for which the trademark is registered.
Establishment of protected areas
All members of the Madrid Association (participants of the Madrid Protocol) who wish to have their trademarks protected in the international application must be specified. A Madrid Union member outside India can be nominated by ticking the checkbox next to each member’s name in the application form (MM2). Trademarks in India (primary trademarks) are protected under Indian law and registered by the Indian Trademark Registry.
Advantages:
1) There is a business process in the middle of the application and global protection can be achieved with a single application and a single set of costs.
2) This is a more convenient and cost-effective method.
3) It can protect many applications.
4) The contract can be in French, English or Spanish (This is preferred in non-French speaking regions such as India.
5) Layers standard takes more time.
6) Any changes in copyright information (name, address, etc.) can be changed by sending documents to the International Bureau without any problems for each country.
7) According to the Madrid Protocol, it is very easy to add and then elect a Member State under the same international name. Over time, the writing and maintenance costs associated with international registration become lower than managing multiple countries separately.
Disadvantages:
- The international application is dependent on the essential application/registration; thus, if there is any change in the “basic” application or registration (like cancellation), these changes shall automatically apply to the international applications as well.
- Assigning the ownership of an International registration to entities residing or having a connection with the Non-Madrid Protocol state is prohibited under the rules of the Madrid Protocol. This is not good for India because it has business interests with several non-member countries. Therefore, it will have to file national applications to deal with these countries.
- If an Indian basic mark is canceled or limited in the first five years, then the International mark will similarly be canceled or limited. After the expiry of this five-year term, however, international registration becomes independent.
REFERENCES
- FOR EXPLANATION~ INTELLECTUAL PROPERTY INDIA ~ https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PROTOCOL.pdf
- FOR ADVANTAGES AND DISADVANTAGE’S PART ~ https://www.mondaq.com/advicecentre/content/3294/The-Madrid-Protocol-in-India
- PATENTBUSINESSLAWYER.COM