With India’s Commerce and Industry Minister Anand Sharma depositing India’s instrument of accession at WIPO, India finally accedes to Madrid Protocol for the International Registration of TradeMarks, hence businesses can eventually protect their trademark in many countries by filing a single application with one set of fees. The said protocol will enter into force with respect to India in July, 2013.
The Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step.
Understanding the procedure in brief:
It is important to understand here that international trademark registration system is governed by two treaties, namely:
-the Madrid Agreement Concerning the International Registration of Trade Marks (1891) and
-the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Trade Marks (1989).
Under the Madrid Protocol, International Trademark Application cannot be filed directly with International Bureau of WIPO, rather it is only to be filed through the Intellectual Property Office of one’s country or organization of origin.An applicant may freely choose his Office of origin (basic application country) on the basis of business establishment, domicile or nationality. Where an Applicant has industrial or commercial establishments in different States that are party to the Protocol. In such a case, any of the Offices of the respective States may qualify as the Office of origin.
Under Madrid Protocol, an international application may be based on either:
-A registration with the Office of origin or
-An application for registration filed with that Office.
And the same may be filed in English, French or Spanish, depending on the Office of origin. Official forms for an international application, are available on WIPO’s website. As India being a signatory to the Madrid Protocol, the applicant, while making an international application to the National Office on prescribed form, may select from the list of the member countries where he wishes to protect the mark.
The Office of Origin shall on receipt of such international application, examine it to check whether the Application is in accordance and complies with the requirements laid. Thereafter the Office of Origin forwards the said Application to the International Bureau at WIPO, which examines the international application to confirm that it complies with the requirements of the Madrid Protocol. Any irregularities found are conveyed to the Office of origin and the applicant must remove the objections within the prescribed time limit.
On successful examination the International Bureau then Records the mark in the International Register, publishes the mark in the Gazette, and notifies each contracting party or member country that are the designated countries listed in the application, asking for their consequent approval, and granting of registration. Thereafter the Office of a Contracting Party adopts the exact procedure adopted for a direct national application . The initial date of receipt of the application by the Office of Origin, shall be the date of the international registration and the period of protection granted by an international registration is 10 years, which can be extended before the expiry of this period.
For Complete details visit the WIPO website : http://www.wipo.int/madrid/en/
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Vidhik-Vishleshan (Decoding The Law & More) 