Madrid Protocol in India
The Madrid System functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It’s regulated by the International Bureau of the World Intellectual Property Organization located in Geneva, Switzerland. The system basically introduced to provide convenience in the system of registration of marks. Every region has a different system for registration of trademarks.
“We recognize that this instrument will provide an opportunity for Indian companies, which are increasing their global footprint, to register trademarks in member countries of the Protocol through a single application, while also allowing foreign companies a similar dispensation.”
The Hindu, Official site, Article, “Global trademark registration: India joins Madrid Protocol”, Retrieved on 12th January, 2018.
A person needs to register his trade mark for protection of his trade mark from other. He can register the mark in the country where he wants to protect his mark. But registration of trade mark in particular country only served to protect the mark only in that country. Any person who wanted to protect his trademark internationally thus required to register the mark in each individual country for availing such protection. This created a lot of chaos like the multiplicity of applications and inconvenience to the potential applicant and also increased the costs for him. Therefore, Madrid system brought to solve all such problems faced by the applicant.
The Madrid system enables the registration of trademarks in multiple jurisdictions worldwide that are part of Madrid Union’s member countries by filing a single application in the Applicant’s national trademark office or regional trademark office. India was not a member of the Madrid system earlier. But soon it realized its advantages and decided to become one of its signatories. India joined the Madrid protocol with effect from July 8, 2013. Applications using the Madrid system can now be filed from India.
Advantages: Madrid protocol in India
Following are the advantages of Madrid Protocol:
- It has a centralized trade mark application process by which a person can get protection worldwide through a single application and a single set of fees.
- Convenient and cost effective method.
- It prevents the multiplicity of applications.
- The Protocol Applications can made in French, English or Spanish.
- The process consumes less time.
- Any change in the details of the right holder can changed by sending one single document to the International bureau.
- No efforts have made at every national office.
- Under the Madrid Protocol, it’s pretty easy to add and subsequently designate the member country at a later date. The filing and maintenance fees associated with the international registration are lower over time than maintaining several separate national registrations.
Disadvantages: Madrid Protocol in India
Following are the disadvantages:
- The international registration only covers Protocol territories.
- The Indian Trademarks registry unable to entertain the national filings because of the lack of manpower. Now that India has adopted the Madrid system. It would be even more difficult to look into both National and International filings at the same time with limited manpower.
- Under the protocol, the international applications needs to processed within 18 months. Because of this, the national filings might get delayed.
- The international application depends on the basic application/registration. Thus, if any change made in the “basic” application or registration. Then these changes shall automatically apply to the international applications as well.
- The rules of the Madrid Protocol prohibits assignment of the ownership of an International registration to entities residing or having a connection with Non- Madrid Protocol. This is not good for India because it has business interests with several non-member countries and now it will have to file national applications to deal with these countries.
- If an Indian basic mark cancelled or limited in first five years then the International mark will similarly cancelled or limited. After the expiry of this five-year term, however, the international registration becomes independent.