Madrid System, including Madrid Agreement and Protocol relating to Madrid Agreement, is an international treaty to facilitate international registration of trademarks and management of trademark applications.
Madrid Agreement and Madrid Protocol – Governing Treaties
The treaties provide an easy and cost effective way of filing international trademarks. Once the trademarks are registered by respective designated offices, the Madrid protocol further provides simple procedures to manage international registrations.
Office of Origin
The trademark office that receives application under Madrid protocol is known as office of origin.
Designated Offices
The trademark applicant can designate one or more trademark offices as contracting party, which is then notified about filing of trademark application under Madrid protocol by WIPO.
Madrid Protocol Application – General Procedure
Usually, once the international trademark application is filed with designation of countries with the office of origin, the contents of said application are verified by said office of origin. Once done, the application is forwarded to WIPO, which is then published by WIPO and subsequently, WIPO notifies all the designated offices. Thereafter, each designated office examines the trademark application as per respective trademark laws, rules and procedures.
MEMBERSHIP
The system consists of 105 members, now covering 121 countries, where the office of the “Contracting Parties” (i.e. any member country as well as an intergovernmental organization) in which you apply for or register your basic mark is known as the Office of Origin.
(http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf – list of members)
The Office of Origin alone plays an important role as it is the site where the necessary connections of the applicant seeking international registration, can be established. It indicates the establishment, domicile and nationality of the applicant.
The international application is filed at the Office of Origin and subsequently forwarded to the WIPO. The application for trademark registration can only be filed in respect of goods and/ or services. All such applications can be bifurcated into two types:
(a) Basic Registration – international application based on a mark that has already been registered
(b) Basic Application – international application that has been applied for but not yet registered.
Madrid Trademark Application in India
The Indian Trademark Office is authorized to receive an international trademark application under Madrid Protocol.
Madrid Trademark Application in India – Requirements
The basic criteria to file Madrid Trademark Application in India requires applicant to be eligible to file said trademark application, which essentially requires the applicant to be an Indian national or having a place of business in India. In addition, the Indian trademark office requires an existing trademark application, known as the basic application, and designation of one or more countries wherein international trademark protection is required.
Documents Required for Filing Trademarks in India
The Indian Trademark Office requires an international trademark application under Madrid Protocol to be accompanied by an application form, power of attorney, payment of handling fee, and payment of international designation fee (in Swiss Francs) payable to WIPO.
Madrid Trademark Application – Role of Office of Origin
During the process of receiving an application for international trademark registration under Madrid System, the office of origin plays an important role. After receiving the application, the office of origin verifies the contents, certifies the application and forwards it to WIPO for publication and notification to designated offices. Subsequently, the office of origin receives details of irregularities in the application, if any, and further communicates with WIPO regarding status of basic trademark application.
Protecting Intellectual Property Rights with International Trademark Applications
Global brand protection includes filing of international trademark application under WIPO Madrid protocol. Trademark attorneys with expertise in worldwide registration of trademarks assist clients with filing of international trademark application through the Madrid efiling mechanism provided by WIPO. After conducting a thorough brand clearance trademark search for multiple jurisdictions, it may be possible to claim protections worldwide through an international trademark as a registered trademark in the home country.
International trademark law is much more complex because trademark laws are limited and require a higher level of quality in order to make them enforceable. However, there are some similarities between international trademark laws and the US. There are many different factors that need to be considered when you want to protect your company’s or product’s name or symbol with an international trademark. First, if you want a stronger international trademark from the United States, you have to go beyond the requirement of the filing of the US application. You also have to get other forms of international protection, such as publications and other international promotional materials.
Many businesses find it important to hire a trademark attorney who is knowledgeable about how to apply legally for protection in foreign countries and what kind of publications they need to use as part of their strategy to protect their mark internationally. A good guide can help you decide how to protect your business name in different parts of the world and can explain each method in detail so you can make informed decisions regarding which ones to pursue. Another option to protect your mark internationally is to file a trademark application or international application.
Trademark applications must be filed with the appropriate country’s office of the local Patent and Trademark Office. If you filed your international application, you will also need to file an application with the country where the international application was filed. Both applications need to include the full name of the business, the name of the company, and the registration numbers for each name. The international application should include the registration date. It is very important to follow the rules and requirements of the country where you registered the trademark. One advantage to filing a trademark in foreign countries is that you have more time to file the international application, and it might get approved much faster than a US trademark application. This does not mean that a trademark filing in the U.S. should necessarily be done first.
Sometimes it is necessary to wait for a similar-sounding trademark in foreign countries before filing your own, especially if there is no competition in the foreign country. However, if there are no comparable names available, you may be able to file your trademark in the country where you have a registered business. There are several advantages to hiring a trademark attorney to help you file your international trademark application.
Having a professional on your side will ensure that everything is done legally and that the paperwork is filed properly. A good guide will provide you with tips about what documents you need to file with the appropriate foreign authorities, and what forms are typically required. If you decide to hire a trademark attorney, make sure that he or she has experience dealing with this type of law. There are many different types of business ventures, including international business ventures. By taking the time to learn about the process of filing for international trademark applications, you can protect your brand and ensure that you don’t become a victim of someone else’s infringing activities. Being proactive is the best way to protect your intellectual property rights.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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