This post was first published on 11th August, 2013.
India has been officially notified as a member to the Madrid Protocol on 8th July 2013 joining 89 other countries including the USA and European Union.
What is Madrid Protocol
The Madrid Protocol is an international trademark filing system that provides a cost-effective and efficient way for individuals and entities to secure protection for their marks in multiple countries by filing one application with the Indian Trademark office. At present, there are a total of ninety one Contracting parties that are members of the Protocol. The list of members of the Madrid Protocol may be accessed here.
Process of International Registration Under Madrid Protocol
An international application may be made under Madrid Protocol by any person or entity that has an active trademark application or a valid trademark registration in India. Upon making an international application, the trademark is entered into the International register of trademarks pursuant to which subsequent filings are facilitated in any of the member countries. While the international application is dependant on the validity of the trademark in India for the first five years, the mark is entered into the International Register within 3-10 months of such application. Simultaneously, upon application the mark is processed for filing in the member countries specified in the application which can be made at the time of filing the International Application or at a later stage. Once processed for filing in the member countries, the application proceeds for registration based on conditions prevalent in each member country within 18 months.
Advantages of filing an International Application under Madrid Protocol
• Eliminates high filing costs involved in individual country filings;
• Eliminates the requirement and costs of a foreign attorney at the time of international filing;
• Lower costs involved in amendments/post registration maintenance and renewal;
• Time for grant of registration restricted to a maximum of 18 months (if no oppositions)
• Registration in each applied country is processed independently;
• Date of Indian filing may be claimed as priority date if Madrid Protocol filing is done within 6 months of the Indian filing. In other cases, Madrid Protocol filing can be done but priority cannot be claimed; and
• Application can be made for registration in additional countries at any later stage once international application is made
Madrid Protocol, if rightly used, may bring about much needed convenience and cost savings for Indian applicants looking to file trademarks in foreign jurisdictions.
Post By: Shravan Kalluri, Shashank & Sripriya Padmanabhan