MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF TRADEMARKS

TABLE OF CONTENTS Introduction Objectives Madrid Agreement Madrid Protocol Comparison Procedure Advantages and Disadvantages Indian Perspective Conclusion

Registration at National Office Registration at Regional Office International Registration INTRODUCTION Due to globalization, focus is on international market. Registration in Foreign Jurisdictions done by: Madrid System Madrid Agreement Concerning International Registration of Marks Protocol Relating to the Agreement

OBJECTIVES Simple, low cost and effective system. Facilitates obtaining of protection for marks. Since international registration is equivalent to a bundle of national registrations, subsequent management of protection is easier. However, it is an INTERNATIONAL REGISTRATION FILING system, not intended to be a harmonization treaty or a registration treaty.

MADRID AGREEMENT FeaturesDe-merits Fixed FeesRefusal PeriodWorking LanguageCentral Attack20 year protectionCountry of Origin In 1891, under Article 19(2) of the Paris Convention, France, Switzerland, Tunisia, Spain, Belgium, entered in to an Agreement to achieve unification in the registration procedure of Trademarks on a global platform

MADRID PROTOCOL On June 27, 1989, during the Diplomatic Conference held in Madrid, the “Protocol relating to the Madrid Agreement Concerning the International Registration of Marks” was signed. The Protocol entered into force on December 1, 1995 and became operational on April 1, The Protocol does not purport to supersede the Agreement; the systems exist in parallel.

COMPARISON: Madrid Agreement Member : States Basic RegistrationTime for Refusal – 12 months Fixed Fees Working language- French only Dependency Madrid Protocol States and Organizations Basic Registration/Application Time for Refusal – 18 months or extended even further Individual Designation Fees French, English, Spanish Possibility of transformation

PROCEDURE Office of Origin International Bureau Designated Contracting Party Registration/ Refusal

FEATURES OF FILING PROCEDURE 18 months

MERITS AND SHORTCOMINGS: One application, one fees, one language Less administrative hassles Allows the right holders to target national, regional or global market Merits Limited members No amendment of mark allowed Consequence of ‘Central Attack’ Shortcomings

INDIAN PERSPECTIVE Union Cabinet ratified India’s accession to the Madrid Protocol in Amendment to Trademark Act, 1999 and Rules. The Bill prescribes a period of 18 months within which a trade mark has to be registered. If an international registration originates from India the registered proprietor or applicant may make an international application on a prescribed form. If the person holds an international registration, he may make an international application on the prescribed form for such registration to any other contracting party.

CONCLUSION The Madrid Protocol has no doubt been a success. Amendments required. INDIAN PERSPECTIVE: Caution to avoid unnecessary predicaments.