This article on ‘The Madrid system for International Registration of Marks‘ was written by Monika Yadav an intern at Legal Upanishad.
In this article, we will know about the Madrid system of trademarks. The Madrid System seems to be a practical and economical way to register and maintain trademarks globally. To file for safety in as many as 128 nations, just submit one application as well as pay a single amount of fee. Utilize a single, centralised system to update, refresh, or increase your global trademark inventory. We will understand the Madrid protocol and also the Madrid agreement. India is also a member, and we see the workings of the system and then conclude our article.
What does it mean?
Two separate treaties, the Madrid Agreement and the Madrid Protocol oversee the registration of trademarks in various jurisdictions worldwide. Although it bears the name “Protocol,” it is not a “protocol” to the Agreement but rather a separate agreement. The Madrid System for the International Registration of Marks is what the Agreement and the Protocol are collectively referred to as the Madrid System.
The term “Contracting Parties” refers to all States and organisations that are parties to the Protocol and/or the Agreement. They collectively make up the Madrid Union, which is a Special Union following Article 19 within the Paris Convention. The Madrid System is a method for acquiring a collection of trademark registrations in numerous states that are professionally managed by the International Bureau of the World Intellectual Property Organization (WIPO), effectively establishing a foundation for an “international registration” of marks.
The Madrid Agreement
To enable the need to file, seek, or maintain separate registrations in many countries is eliminated by a single, affordable worldwide trademark registration. The Agreement was established in 1891. Whenever a mark is registered as per the Agreement, having the exact legal impact as if the mark owner had decided to register it in one of the member countries. If the targeted country’s trademark office neglects to notify WIPO of a denial of registration within the allotted 12-month period, the trademark will be protected to the same extent as authorized national trademarks in the same nation (but as per Protocol it extends to 18 months).
The Agreement calls for a simplified renewal procedure because WIPO only needs one file for both renewals as well as modifications to the primary registration which impact all of the nations included here by registration.
Regardless of the benefits of registration under the Agreement, the US and other important nations (including Australia, Denmark, Finland, Greece, Iceland, Ireland, Japan, Netherlands, Republic of Korea, Sweden, and the United Kingdom) had not ratified it because of purported structural issues. These so-called flaws allegedly included things like the requirement for home country registration even before the granting of mark safety, infinite limitations on assignability, a chance of a “central attack” on the mark, a brief inquiry time, evaluation costs that were less expensive than those currently charged by the native nation’s mark offices.
The Madrid Protocol
To address such alleged flaws within the Agreement, the Protocol was approved in 1989. However, the Protocol upholds the Agreement’s original goal, which was to establish a mechanism for quick and affordable worldwide trademark registration. As a result, although there are currently only 57 signatories to the agreement, 74 nations, including the USA, were part of either the Agreement or the Protocol.
India as a member
A trademark holder might also use their Community Trademark (CTM) to preserve their mark through 88 Contracting Parties and the EU under the Madrid system, which is administered by WIPO, by filing a specific application in one of three languages (English, French, or Spanish), in addition to a limited piece of fees in a single currency (Swiss Francs). India adopted the Madrid Protocol on April 8, 2013, and it joined on July 8, 2013, increasing the overall number of parties to 90.
With the help of the Madrid System’s “Basic Application / Registration” method, a trademark owner who has filed for registration or already has a registration in a member country may receive “International Registration” for their brand from WIPO. After that, the mark’s owner has the option of choosing “International Registration,” also known as “Designation,” to get protection in one or more member nations.
Furthermore, thanks to the Madrid Protocol, a trademark owner can now simultaneously apply for registration across any partner jurisdiction and receive “International Registration” by force of the Madrid Protocol. By submitting a single application in a single jurisdiction with a limited fee, a trademark owner can register their mark for any or even all member states, make any necessary changes to the information (such as their name or address), and renew their registration in all relevant jurisdictions across a single official bureaucratic system.
The natural reversal of the previously stated Madrid System/Protocol feature is, nevertheless, that if a “Basic Registration/Application” is rejected, cancelled, or revoked, the global registration will likewise be rejected, cancelled, or rescinded to the same level. For illustration, if the “Basic Application” for shampoo is cancelled, the “International Registration” of the exact mark for shampoo is going to be cancelled. This applies to applications for registration of marks for herbal products such as cleansers, face washes, and hair products. The “International Registration” will also be rejected if the “Basic Application” is rejected.
The process of testing a “Basic Application” for registerability is known as a “Central Attack.” An “International Registration” (also known as a “Transformation”) is split up into several applications in every jurisdiction to reduce the impacts of a successful central attack. This overpriced process is justified, however, in addition to this benefit but also because the applications that arise will use the registration date of the global registration as their date of filing.
The Madrid Express database would be a free tool offered by WIPO to look up international marks. It is modified every day. The database includes interfaces for both basic and structured searches. All global registrations which are active at the moment or have recently been terminated are included in Madrid Express.
WIPO makes all efforts to guarantee about the database accurately portrays the information contained in the Global Registration, but users should be aware that the Gazette is still the only authoritative source and that the only reports issued by the International Bureau about the components of the Global Registration for a specific world registration are the approved substances by the Register recognised upon recommendation.
- Vicenc Feliu, International Trademark Law- The Madrid System, Available at: https://www.nyulawglobal.org/globalex/International_Trademark_Law.html (Accessed: November 29, 2022).
- Sharad Saini, The Madrid System for the International Registration of Marks, Available at: https://www.khuranaandkhurana.com/2013/07/16/the-madrid-system-for-the-international-registration-of-marks-madrid-system/?amp=1 (Accessed: November 29, 2022).
- Madrid- The International Trademark System, Available at: https://www.wipo.int/madrid/en/. (Accessed: November 29, 2022).