Working of the Madrid Protocol

India, in today's intellectual era, has shown prominent growth in Research & Development. Trade Related Intellectual Property Rights (TRIPS) agreement and compliance with  the US and European Intellectual Property Right (IPR) structure has been an area of huge success for India, given their significance and the nation’s developing status. The twenty-first century is viewed as the century of technology and knowledge, most definitely the regime of intellect; and in such an era, a country's ability to translate knowledge into innovation and  wealth creation will drive its future. Therefore, issues of generation, evaluation, protection and exploitation of IP would become critically vital all over the world.
     
For businesses, IP protects more than just an idea or a concept. It protects genuine business assets that may be integral to the core services of the business and overall long-term viability. Companies of all sizes across the globe are at risk of having their unique ideas, products or services infringed upon, making IP protection all the more central.
     
IPR plays a vital role in almost every sector today and has become a driving factor for investment decisions for  many companies. The very fact that 80% of patent filings in India are by Multi-National Corporations (MNCs) reflects upon the well-poised IPR regime in India that acts as an incentive for foreign organizations to protect their IP in India. The Indian economy  has been growing rapidly for the last few years and it is one of the fastest growing economies in the world. Many Indian companies have started to invest money in other countries and  are expanding their business.. With a  rapidly growing economy, ease in  trade barriers, increased capability of local companies to invest abroad and influx of foreign investment, it is essential to have proper protection regime in place. We believe IP rights are worth protecting, both domestically and internationally, and India has taken strong steps in strengthening IPR in the country.  

The Madrid system is a global trademark registration system that enables trademark owners to attain protection in several countries by means of a single international application.
       
India submitted its instrument of accession to the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks, known as the "Madrid Protocol”, on 8 April, 2013 with the World Intellectual Property Organization (WIPO). India became the 90th country to accede to the Madrid Protocol. This being one of the most significant developments in Indian trademark law in recent years;  a system for obtaining international trademark protection that is streamlined and potentially cost-efficient. The Madrid Protocol, which came into existence in 1989 and came into force on 1 April 1996, is a modernized offshoot of the Madrid Agreement. The most important advantage of the Madrid Protocol is the ability to file an international application on the basis of a pending application in a Contracting Party instead of a registered trademark, as required under the Madrid Agreement. Another important aspect of the Madrid Protocol is the mechanism to apply for transformation of a failed international registration into regional or national applications, while retaining the priority date of the original international registration.
       

A Madrid application, that allows applicants to choose the exact countries in which they seek protection, can be filed by a natural person, or a legal entity, having real and effective industrial or commercial establishment status, or being a domicile, or being a national of a Madrid Union Member Country.

Step1 must own an active application or registration for the trademark in a Madrid Protocol member country. This country must also qualify as the owner's country of origin (where the owner is domiciled, is a national, or has a real and effective commercial establishment). This initial filing is referred to as the basic application or basic registration. It is important to note that the Madrid Protocol permits the owner to obtain protection solely for the identical trademark and for the same or narrower goods or services as covered by the basic application or registration. For instance, a US based company may use the Madrid Protocol if it owns a US application or registration for the same trademark it wants to protect abroad.
       
Step2 Irrespective of how old the basic application or registration is (as long as it is still active), the owner may apply to protect that trademark abroad by submitting a Madrid Protocol International Application in English, French or Spanish, through the trademark office in its country of origin. The International Application must include the details of the basic application or registration, and it must specify the member countries where it desires protection.
       
Step3 Upon receipt of the International Application, the trademark office in the country of origin checks the application for completion. If no irregularities are found, the trademark office forwards the application to WIPO, else, in case of aberrations, the trademark office would notify the owner of rejection often requesting  refiling.
       
Step4 WIPO, on receipt of the International Application or a Request for Subsequent Designation, performs a review to ensure adherence to all formalities, including payment of WIPO's official fees. In case of irregularities, the owner, if notified, is usually given a three month timeframe to respond.
       
Step5 Post the due diligence, in case of no irregularities, WIPO would promptly issue a registration date (backdated to the day of filing of the International Application, unless the originating trademark office took more than two months to forward the International Application to WIPO) and the registration number gets published in WIPO's official gazette. Although the registration is not yet in effect in any country, the owner is said to own an International Registration.
       
Trademark rights can also be backdated under a priority claim, which may be possible if the basic application was filed within the six months prior to the filing of the International Application. If the owner files a Request for Subsequent Designation where an International Registration date and number already exist, WIPO does not issue new ones. The Request potentially entitles the trademark owner to rights in the countries designated in that request dating back to when WIPO received the Request.
       
Step6 WIPO would then forward a Request for Extension of Protection to the trademark office in each country designated by the owner in the International Application or Request for Subsequent Designation.
       
Step7 Once each designated trademark office receives the request for Extension of Protection from WIPO, it is given the chance to examine the Request in accordance with that country's usual procedures and decide whether to permit the International Registration to take effect there. The request is treated like a regular,  non-protocol application in that country and is subject to that country's usual trademark prosecution process, including publication and opposition by others. If a trademark office does not issue a refusal within a certain period of time (either 12 or 18 months, depending on the country, and unless the trademark office notifies WIPO indicating more time might be needed due to another party's potential opposition to the mark), then the International Registration is automatically deemed to have effect in that country. If the Request is refused or opposed, then the owner must employ a local attorney to respond.
       
Step8 A significant advantage of the Madrid system is the upadate in  an International Registration to reflect transfers of ownership or changes in owner name or address, where the trademark owner can file a simple form with WIPO, saving them the task of recording the change in each country (sometimes with special proof of the change). Another enormous advantage (over national registrations) is that the trademark owner has to fill the single renewal form with WIPO every ten years from the International Registration date to maintain an International Registration, not having to file a renewal in each country. The trademark owner can subsequently expand the International Registration's geographic scope of protection at any time by filing a Request for Subsequent Designation, given the International Registration is maintained.    

The National Route vs. the Madrid Route

• Many offices for filing
• One office for filing
• Many application forms
• One single application form
• Many languages
• One language (English, French or Spanish)
• Many Currencies
• One Currency (Swiss francs)
• Many registrations
• One international registration
• Many renewals
• One renewal
• Many modifications
• One modification
• Foreign attorney needed for filing
• Foreign attorney only needed in case of refusa

The filing fees under the Madrid Protocol are projected to be significantly lower than that for filing separate applications with the National  Trade mark office. After registering the mark, or filing an application for registration, with the office of origin, the applicant only has to file one application and pay fees to one office and in one language, instead of filing separately in the trade mark offices. Similar advantages exist when the registration has to be renewed, assigned, or for change of name etc.

The subsequent management of the Trade Mark portfolio is made much simpler, since an International Registration is equivalent to a bundle of national registration. There is only one registration, and hence, one registration to renew and a single, simple procedural step to record changes, such as a change in ownership or in the name or address of the holder, or a limitation of the list of goods and services.
       

As the Protocol sets strict time limits (12 or 18 months) for objections to be raised by the designated offices, protection can be secured within a short  timeframe when compared  with a national application. However, this depends upon the national practice in the contracting parties to be designated. In some countries/jurisdictions, national applications may proceed to registration faster than the grant of protection to a national designation under an International Registration. Some thought, therefore, needs to be givenwhen considering whether to opt to file nationally or designate under an International Registration, to judge how long it would take for a comparable national application in the relevant country/jurisdiction to proceed for  registration.   

Protocol applications also benefit from the advantages afforded by the Paris Convention in obtaining a priority filing date. The Paris Convention limits the grounds on which an examining office may refuse registration to those applicable in the case of a mark filed directly with that refusing office.
       

The International registration can also be extended to a Contracting Party not covered by the International application by filing a subsequent designation. This is an added advantage to the Trade mark owner, allowing them to choose an area according to the expansion of their business. Further, a designation can be made to a Contracting Party which was not a party to the Agreement or Protocol at the time of the International application.
       

WIPO checks the application against the basic filing requirements, easing the National office from any formal verification, or classification of goods or services or publication of the marks. The WIPO informs the office of origin and the applicant, in case of an issue, and the same must be addressed within a three months period to avoid any abandonment.
       

An International Registration is dependent on the Basic Application or Registration for a period of five years from the date of International Registration. In case of an unsuccessful Basic Application or a cancelled Basic Registration, the International Registration will collapse. However, all is not lost as there is a provision to transform all or part of the rights under the International Registration into a national application or registration in one or more of the designated countries.
       

As the International Registration is dependent on the Basic Application or Registration for five years, any limitations made to the basic mark may impact the rights which can be claimed in the designated countries. For example, if the goods and/or services covered by the Basic Application were narrowed, the goods and/or services covered by your International Registration will also be narrowed.
       

The susceptibility of the International Registration on the basic mark for five years from the date of the International Registration is independent on  any changes of ownership. Given this, any documentation concerning a change of ownership of the basic mark within this five year period must comprise appropriate warranties from the new owner so that the action or inaction of the new owner does not risk the International Registration.
     

The Protocol attempts to strike a balance between the need to respect a country's trademark examination system, an aspect of State Sovereignty, and the need to create an efficient framework for international trademark registration. It is apparent from the above breakdown that the Protocol does not affect any change in the utilitarian provisions of the law within a country. At the same time, even though securing international trademark, protection under the Madrid Protocol has many rewards;, it is not a panacea. Every  business entity must weigh the pros and cons of filing their mark under the Madrid Protocol in each circumstance and each country, before proceeding. Nonetheless, the Protocol is a new tool in the hands of Indian business entities and trademark lawyers to evaluate the best route to obtain trademark protection in countries outside India. The Protocol provides a system for a cost-effective method of obtaining trademark protection in many markets around the world, enhancing the ability of the enterprises in India to do business abroad in selective territories. While considering the economic growth achieved by India in the last few years and interest among the foreign investors, the accession of the Madrid Protocol is one of the best ways to promote  global trade. Understanding the system and its limitations, and the multiple available options, however, is crucial to developing the best strategy for the international registration of marks. Thus, the step taken by India to accede  to the Madrid Protocol could not have been more appropriate than anything at this point of time, given that  more and more Indian companies going global.