- INTRODUCTION
In an era of expanding international trade and global business landscapes, protecting intellectual property rights has become a paramount concern for businesses seeking to establish a strong and recognizable presence worldwide. One of the key mechanisms facilitating this endeavor is the Madrid System for the International Registration of Marks. The Madrid Union currently has 114 members, including both States and intergovernmental organizations that are Contracting Parties to the Madrid Protocol, covering the territories of 130 countries, representing more than 80% of world trade flows.
This system simplifies and streamlines the process of trademark registration across multiple jurisdictions. Administered by the World Intellectual Property Organization (WIPO), it provides a unified and efficient framework for businesses to secure and manage their trademarks in multiple countries through a single, centralized application. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties.
- UNDERSTANDING THE FRAMEWORK
- ORIGIN OF THE SYSTEM
The framework of the Madrid System for the International Registration of Marks is underpinned by two pivotal treaties. The first of these, the Madrid Agreement, traces its origins back to 1891 and has undergone several revisions. This foundational agreement was amended in 1979, solidifying its role in shaping international trademark protection. Complementing the Madrid Agreement is the Protocol, forged in 1989, which was crafted with the objective of enhancing the adaptability and compatibility of the Madrid system. It entered into force on December 1, 1995, and came into operation on April 1, 1996. Common Regulations under the Agreement and Protocol also came into force on that date. Specifically designed to accommodate the diverse domestic legislations of countries or intergovernmental organizations unable to accede to the agreement, the Protocol represents a significant stride toward fostering a more inclusive and flexible global trademark registration mechanism. The two treaties are parallel and independent, and States may adhere to either or both of them. In addition, an intergovernmental organization that maintains its own office for the registration of marks may become a party to the Protocol. Instruments of ratification must be deposited with the Director General of WIPO.
- SCOPE OF THE SYSTEM
It is important to note that this system only facilitates access to protection in possible markets, but whether or not the mark is protected in a given territory is determined by the respective Contracting Party. WIPO carries out only a formal examination of the application. It does not examine the substantive aspects of the protection of the mark.
- REQUIREMENTS TO GET INT. REGISTRATION
For getting an international trademark registered under the Madrid System, it is essential to meet specific eligibility criteria outlined by the Agreement and the Protocol. The applicant, whether a natural person or a legal entity, must have a substantial connection with a Contracting Party through establishment, domicile, or nationality. Moreover, the mark intended for international registration must already be registered with the trademark office of the relevant Contracting Party, referred to as the office of origin. This is known as “basic registration”. Notably, if designations are made under the Protocol, the international application may be based on a simple application for registration filed with the office of origin. This application is then submitted to the International Bureau of WIPO through the office of origin. An international registration application must specify one or more Contracting Parties where protection is sought, with the option to add further designations subsequently. It is crucial to observe that the designation of a Contracting Party is determined by whether the Agreement or the Protocol is common to the concerned parties, with the latter prevailing if both are applicable.
An international registration remains dependent on the mark registered or applied for in the Office of origin, for a period of five years from the date of its registration. If, and to the extent that, the basic registration ceases to have effect or the basic application is refused or withdrawn or treated as abandoned within the five-year period, the international registration will no longer be protected. In case of refusal, each office may – within one year (in some cases 18 months or longer) of the date upon which WIPO notified them of their designation – issue a provisional refusal.
- BENEFITS OF THE MADRID SYSTEM
This system presents trademark owners with a myriad of benefits. Through a single application submitted to the International Bureau via the home country’s office, trademark owners can secure an international registration, simplifying the process with one language choice (English, French, or Spanish) and a consolidated set of fees. This not only alleviates the administrative burden but also proves cost-effective compared to the traditional method of managing multiple applications with varying fees. The advantages extend to the maintenance and renewal of registrations, allowing for a streamlined and centralized process. Additionally, changes such as assignments to third parties or modifications in name and/or address are effortlessly recorded, affecting all designated Contracting Parties through a singular procedural step.
Flexibility is a key feature of the system, allowing trademark owners to tailor their protection strategy. Protection may be modified by limiting it to specific goods or services, or renouncing it in relation to selected Contracting Parties. The adaptability of the international registration system is further demonstrated in the option to transfer the registration, whether in its entirety or only in relation to specific Contracting Parties and designated goods or services.
The impact of an international registration within each designated Contracting Party mirrors that of a direct deposit with the respective national office, commencing from the date of the international registration. In the absence of a refusal within the stipulated time frame or the withdrawal of an initially notified refusal, the mark enjoys protection akin to if it had been locally registered. The validity of an international registration spans a period of 10 years and can be extended for successive 10-year intervals upon the payment of the prescribed fees.
- CONCLUSION
The Madrid System plays a crucial role in the present-day era because the world is like a small village. Multinational companies are coming up in various jurisdictions and require legal protection to carry out business smoothly. A trademark, serving as a symbol of goodwill, derives its value from the perception of the public who consistently choose products and services associated with the trademark. This system makes it easier to protect one’s goodwill associated with a trademark.
BY AYUSH GUPTA, STUDENT OF LAW, NLU-DELHI
DUCTUS EDGE 