Madrid Protocol: Simplifying International Trademark Registration in India.

Overview-

The Madrid Protocol and Agreement were both adopted at a conference held in Madrid, and came into existence on April 1, 1996. The administration of the Madrid system, which enables trademark registration in multiple jurisdictions across the world, is overseen by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. This system offers a mechanism for obtaining trademark protection in numerous countries, and currently has 100 members, including states and intergovernmental organizations that are contracting parties to the Madrid Protocol, covering the territories of 116 countries. By providing a user-friendly, expeditious, and cost-effective set of procedures for central filing of trademark applications and the management of trademark registrations with effects in various countries, this protocol allows for the obtainment and maintenance of protection for a brand worldwide. There are 107 member countries of the Madrid Protocol, which are as follows-

• Brazil

• China

• European Union

• France

• India

• Japan

• Singapore

• Australia

• Czech Republic

• Germany

Registration of Patents Design and Trademark in India under Madrid Protocol-

The office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) houses the Trademarks Registry, which is responsible for processing international trademark applications originating from India. The necessary requirements for registering a trademark are as follows:

1. Requirements:

To register a trademark, two requirements must be met. Firstly, you must be entitled to do so, which means being either a natural person or legal entity domiciled in India, or having a real and effective industrial or commercial establishment in India. Secondly, you must have a "basic mark" registered or applied for protection in India with the India Trademarks Registry.

1. Online E-filing and Registration:

To file an international application under the Madrid Protocol, it must be done on the IP India website at https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx for electronic filing. The following steps must be taken for electronic filing registration with IP India- (i) obtain a class III/II digital signature from any of the Indian Certifying Authorities and install it on the computer; (ii) download and install the Signing Component as per the instructions given in the CGPDTM Digital Signature Manual. Additionally, an online payment of Rs 5000 for each international application must be made.

1. Mandatory Subject Matter of the International Application:

The international application i.e. the form MM2 must have to following-

The following details are mandatory to include in your international trademark application:

• your name and address;

• a reproduction of your mark, which must be identical to your basic mark in India;

• a comprehensive list of the goods and services for which protection is sought, matching those listed in your basic mark;

• a list of designated Contracting Parties within the Madrid Union where protection for your mark is sought.

• proof of entitlement to file, which could be a domicile or establishment in India or Indian nationality;

• a priority claim, if applicable;

• the name and address of a representative, if appointed;

• the number and date of your basic mark at the India Trade Marks Registry;

• indications of the mark (type of mark, color claim, if relevant);

• a description of the mark, if necessary;

• transliteration of the mark, if required;

• details of the fees being paid and the method of payment.

1. Specify the territories for Trademark Protection Designation:

When filing an international trademark application, it is important to include a list of all Madrid Union members (Madrid Protocol Contracting Parties) where protection is desired. This can be done by selecting the relevant member(s) from the list provided on the application form (MM2), except for India. The Indian basic mark will remain protected under Indian law by the India Trade Marks Registry.

1. Provide the list of goods and services:

It is essential to accurately specify the goods and services that require trademark protection while submitting an application, be it for national or international registration. Any imprecise or confusing terms will not be accepted, and they must conform to the International Classification of Goods and Services for trademark registration.

The correctness of the goods and services listed in a trademark application is crucial, and they must align with the International Classification of Goods and Services for registration purposes. The application, whether for national or international registration, must not contain ambiguous or linguistically incorrect terms.

While applying for trademark registration, it is imperative to provide a precise description of the goods and services that require protection. The terms used must be correct and understandable, and they must be classified appropriately based on the International Classification of Goods and Services.

1. Costs, Fees and Payment Methods:

i) Costs and Fees-

To register a trademark under the Madrid Protocol, there are several fees that must be paid, including a basic fee of either 653 Swiss francs if the reproduction mark is not in color or 903 Swiss francs if the reproduction mark is in color. Additionally, an individual fee must be paid for each designated Contracting Party that has fixed individual fees. For Contracting Parties without fixed individual fees, a complementary fee of 100 Swiss francs is required. If more than three classes of goods and services are included, a supplementary fee of 100 Swiss francs per class is necessary, unless only Contracting Parties with fixed individual fees are designated.

ii)Payment Methods-

The payment methods for the costs and fees are credit card, WIPO current account and bank transfer.

Conclusion:

In conclusion, the Madrid Protocol has revolutionized the process of obtaining and maintaining trademark protection across multiple jurisdictions worldwide. With over 100 members, including India, the Protocol provides a user-friendly, expeditious, and cost-effective set of procedures for central filing of trademark applications and the management of trademark registrations with effects in various countries. The Indian Trademarks Registry has set certain requirements for registering a trademark under the Madrid Protocol, which must be met by the applicant. These requirements include having a basic mark registered or applied for protection in India, being entitled to file, and providing accurate information about the goods and services requiring protection. The Madrid Protocol requires various fees to be paid for the registration process, and the payment methods include credit card, WIPO current account, and bank transfer. The Madrid Protocol has simplified the process of trademark registration in India, making it easier for businesses to protect their brands on a global scale.