Madrid System
MADRID SYSTEM FOR INTERNATIONAL REGISTRATION OF TRADEMARKS:
INTRODUCTION:
Madrid System is administered by the International Bureau of WIPO in Geneva, Switzerland
a). Madrid Agreement: The Madrid Agreement concerning the International Registration of trademarks became effective on July 13, 1892. This is a special arrangement for harmonization of trademark registrations open only to countries party to the Paris convention. Since its inception the membership has grown in strength and number with several countries obtaining membership. (Kindly refer the list of member countries below)
b). Madrid Protocol: Pursuant to the failure of Trademark Registration Treaty (TRT), in the mid 1980s WIPO undertook to outline an improvised treaty that would aim at remodelling those parts of Madrid Agreement which were not acceptable to non-members of the Madrid Agreement. (Kindly refer the list of member countries below)
To harmonise and simplify international registration of trademarks, the Madrid Protocol was framed and it entered into force on December 1st 1995 and became operative on April 1st 1996.
The aim of the Madrid Protocol was to make the system of registration of international trademarks more flexible and compatible with the national legislation of those countries which were unable to consent to the Madrid Agreement.
The above treaties are parallel yet independent and contracting parties to the Paris convention may choose either of them or both.
In the event of both contracting parties being members of both the agreement and the protocol, the designation will be governed by the agreement, in accordance with the ‘safeguard clause’.
DIFFERENCE BETWEEN MADRID AGREEMENT & MADRID PROTOCOL
Madrid Agreement:
· Refusal Period / Examination: 12 months for national trademark office to undertake examination and subsequent refusal if any.
· Fees: Lower in comparison to Madrid Protocol and direct National Applications.
· Languages: Only French to be used for prosecution of applications.
· Basis: Applications originate only from existing trademark registration.
· Presence: Madrid Agreement is not as widely present as the protocol.
· Conversion: unlike the Protocol, applications under the Madrid Agreement cannot be converted into national applications and retain their original filing date
Madrid Protocol:
· Refusal Period / Examination: 18 months for national trademark offices to undertake examination and subsequent refusal if any.
· Fees: Higher in comparison to Madrid Agreement but lower when compared to filing fees for direct National Applications.
· Languages: French, English, Spanish can be used for prosecution of applications.
· Basis: Applications can originate either from an existing trademark registration or an application pending registration.
· Presence: Protection through protocol is subscribed by a wider range of countries and important jurisdictions such as the US, UK, Japan, in comparison to the Agreement. (More countries are signatory to protocol compare to agreement)
· Conversion: In the event the original or basic application faces some difficulty in the form of refusals, withdrawals, cancellations, protocol applications can be converted into national applications and they can retain the original filing date.
WHO ARE ELIGIBLE TO USE THE MADRID SYSTEM:
Applicants intending to use the Madrid Agreement and the Madrid Protocol have to be either a person or persons or a legal entity establishing the required route via an establishment, domicile or nationality of a contracting party or through a member state of the EU (European Union).
MEMBERS
Albenia – Agreement & Protocol
Algeria – Agreement
Antigua & Barbuda – Protocol
Armenia – Agreement & Protocol
Austrilia – Protocol
Austria – Agreement & Protocol
Azerbaijan – Agreement & Protocol
Bahrain – Protocol
Belarus – Agreement & Protocol
Belgium – Agreement & Protocol
Bhutan – Agreement & Protocol
Bosnia & Herzegovina – Agreement & Protocol
Botswana – Protocol
Bulgaria – Agreement & Protocol
China – Agreement & Protocol
Colombia – Protocol
Croatia – Agreement & Protocol
Cuba – Agreement & Protocol
Cyprus – Agreement & Protocol
Czech Republic – Agreement & Protocol
DPR of Korea – Agreement & Protocol
Denmark – Protocol
Egypt – Agreement & Protocol
Estonia – Protocol
European Union – Protocol
Finland – Protocol
France – Agreement & Protocol
Georgia – Protocol
Germany – Agreement & Protocol
Ghana – Protocol
Greece – Protocol
Hungary – Agreement & Protocol
Iceland – Protocol
India – Protocol
Iran – Agreement & Protocol
Ireland – Protocol
Isreal – Protocol
Italy – Agreement & Protocol
Japan – Protocol
Kazakhstan – Agreement & Protocol
Kenya – Agreement & Protocol
Kyrgyzstan – Agreement & Protocol
Latvia – Agreement & Protocol
Lesotho – Agreement & Protocol
Liberia – Agreement & Protocol
Liechtenstein – Agreement & Protocol
Lithuania – Protocol
Luxembourgh – Agreement & Protocol
Madagascar – Protocol
Mexico – Protocol
Monaco – Agreement & Protocol
Mongolia – Agreement & Protocol
Montenegro – Agreement & Protocol
Morocco – Agreement & Protocol
Mozambique – Agreement & Protocol
Namibia – Agreement & Protocol
Netherlands – Agreement & Protocol
New Zealand – Protocol
Norway – Protocol
Oman – Protocol
Philippines – Protocol
Polland – Agreement & Protocol
Portugal – Agreement & Protocol
Republic of Korea – Protocol
Republic of Moldova – Agreement & Protocol
Romania – Agreement & Protocol
Russian Fedration – Agreement & Protocol
San Marino – Agreement & Protocol
Sao Tom & Principe – Protocol
Serbia – Agreement & Protocol
Sierra Leone – Agreement & Protocol
Singapore – Protocol
Slovakia – Agreement & Protocol
Solvenia – Agreement & Protocol
Spain – Agreement & Protocol
Sudan – Agreement & Protocol
Swaziland – Agreement & Protocol
Sweden – Protocol
Switzerland – Agreement & Protocol
Syrian Arab Republic – Agreement & Protocol
Tajikastan – Agreement & Protocol
The Former Yugoslav Republic of Macedonia – Agreement & Protocol
Turkey – Protocol
Turkmenistan – Protocol
Ukraine – Agreement & Protocol
United Kingdom – Protocol
United States of America – Protocol
Uzbekistan – Protocol
Vietnam – Agreement & Protocol
Zambia – Protocol
WHAT ARE THE ADVANTAGES OF THE MADRID SYSTEM OF INTERNATIONAL REGISTRATION OF TRADEMARKS:
This system of international registration of marks has several advantages for trademark owners such as:
· Filing of just one single application with WIPO through the office of the home country.
· Elimination of diverse national legislation at the time of filing until the examination of the application by the designated countries.
· Depositing a one – time fee and doing away with multiple and many a times higher national filing fees.
· Simplification the language hurdle with a choice of designated languages.
· Simplification of renewals by way of a 10 yearly time limit
· Ease of recordals in the event of carrying out changes to the application such as assignments to third parties, name and/or address etc by way of a single step.
· Lengthy legal formalities such as Legalisation, Counsularisation, Translation of documents are dispensed with.
· Single Power Of Attorney is sufficient during filing of International Applications under the Madrid system.
· Consideration by way of Madrid Protocol can extended to such countries where the applicant at the time of filing the international application is not carrying on business but envisions doing business in the near future. Consideration should specially be given to such countries where piracy and / or counterfeiting of the applicant’s goods and services poses a serious threat.
INTERNATIONAL REGISTRATION PROCESS UNDER THE MADRID SYSTEM:
After filing of the trademark application with the home office, the application is transmitted to International Bureau by paying transmittal fees.
Language designated for prosecuting the application under the Madrid Agreement is French while the languages for prosecution of the application under the Madrid Protocol are English, French, Spanish.
EXAMINATION:
Upon receipt of the international application from the contracting countries’ home offices, the International Bureau conducts a formalities examination to ascertain that compliance with the requisites of the Agreement and the Protocol along with their Common regulations are met by the application.
Formalities examination is carried out only as far as basic information of the application is concerned along with the classification, clarity and accuracy of the goods and/or services .
Substantial examination such as registrability of the mark, qualification of the mark for registration, conflict of the mark with prior pending marks will be at the discretion of the designated countries national offices as mentioned therein.
PUBLICATION:
In the event of the International Bureau not finding any irregularities or non-compliance with the requisite formalities, the mark is recorded in the international register and then publishes this registration in the WIPO Gazette of international marks.
NOTIFICATION:
Post publication of the mark, WIPO notifies the same to the home office of each designated contracting party.
SUBSTANTIAL EXAMINATION:
Post notification, national offices of the contracting parties examine the international applications substantially regarding registrability of the mark as per their national legislations.
In the event of non-compliance of substantive requirements, the designated countries can refuse registration of the mark in their respective countries.
Refusals if any along with grounds for refusal are to be communicated to the international bureau within 12 months for an application by contracting parties to the Madrid Agreement and within 18 months by contracting parties to the Madrid Protocol.
There being no refusals or objections to the mark within the above stipulated time frame by the national offices of the designated countries, the mark is deemed registered.
Madrid System offers an option to the applicants wherein, the mark being objected to by the national offices of the designated countries, the applicant can convert the application into a national application and proceed as per the national legislation of that particular country.
OPPOSITION:
Pursuant to substantial examination of the international application by the designated contracting parties as per their national legislation, the application is then published in the official journals / gazettes for opposition by third parties.
If there is no opposition within the subscribed time line, the mark is registered and a certificate of registration issued to the applicants.
In the event of oppositions, contracting parties may communicate refusals post the timeline of 12 months by the application under the agreement and 18 months by the protocol.
Such refusals are intimated to the applicant and all procedural communication subsequent to refusals such as appeals, reviews etc are take place directly between the home office of the designated country and the applicant.
There shall be no involvement of the International Bureau in these matters.
The final decision or order regarding the refusal has to be communicated to the international bureau which then records and publishes the same.
REGISTRATION:
Pursuant to the registration of the mark by the designated national office, the registration date of the application is accorded from the date of international registration, which would be considered to be the same date as though the mark had be filed directly with the national office of the designated country.
Similarly, in the event of there being no refusals issued within the prescribed time limit or, if the refusal put up by the designated country is withdrawn later on, protection to the mark is accorded from the date of international registration.
Once the national office registers a trademark, the date of registration in each contracting party is from the date of international registration, the same as if the mark had been deposited directly with the office of that contracting party. If no refusal is issued within the applicable time limit, or if a refusal originally notified by a contracting party is subsequently withdrawn, the protection of the mark in question is from the date of international registration.
DISADVANTAGES OF USING MADRID SYSTEM
Central Attack: Cancellations at the home country’s office concerning the home application or basic application owing to either 3rd party actions or voluntarily by the applicant results in failure of the international registration during the first 5 years of the life of the application.
Conversion: Applications via the protocol route offer an advantage to the applications. In the event of the home applications facing a central attack, international applications can be converted into national applications in the designated countries and proceed according to such country’s national legislation.
Priority: Further, the applicant can claim priority in the designated country based on the original international registration. However, he will have to file the converted national application within 3 months from the date of cancellation of the international registration.
Conformity: Conformity of the International Trademark application as regards its identity to the trademark application with that of the home country must be ensured, as, even a minor error with respect to the mark will likely be impossible to correct. Therefore, attention is to be paid by the applicant to ensure that description of Goods and Services are exactly the same as in the home registration.