Implementation Of The Madrid Protocol In India: A Convenient Way
Halsbury's Law - June 2008
The Madrid System has been used by trademark owners in its
member countries for many years. Initially implemented in 1891 with
the Madrid Agreement and extended in 1989 to include the Madrid
Protocol, the system provides an alternative to a bundle of
national applications with all their individual registration
requirements and separate fees. In February 2007, India's
cabinet had ratified the accession to the Madrid Protocol, and
implementation of the necessary law can be expected to be finalised
by the end of this year. At that time, Indian trademark owners will
be in the position to use this attractive system and extend the
protection of their national applications and registrations to all
member countries of the Madrid Protocol in a very quick, efficient
and cost-effective way. There are currently 75 member countries
(also called "Contracting Parties"), which can be covered
through one single centralised application for an
"International Registration" (also called "WIPO
Registration"). Owners of Indian trademarks can then file
their applications for International Registrations via the Indian
Trademark Office and will be able to designate?among many
others?countries economically as important as Australia,
China, Japan, Singapore, the E.U. and the U.S. Furthermore, the
Madrid Union is consistently growing from its initial, smaller
circle of European member countries to a truly global network;
Madagascar has just joined the list of the next candidate
countries, which include South Africa, Indonesia and Israel.
Basic Principles of the International Registration
The Madrid System is only available to applicants in its member
countries, and the geographic scope of trademark protection is also
limited to the territories of these countries. Thus, Indian
applicants will only be able to designate member countries of the
Madrid Protocol but not those that exclusively joined the Madrid
Agreement; this restriction is, however, of limited relevance as
there are only 7 member countries that have not joined the
Protocol, namely Algeria, Bosnia and Herzegovina, Egypt,
Kazakhstan, Liberia, Sudan, and Tajikistan. An applicant under the
Madrid Protocol must own a Trademark application or registration in
its home country (in this case India) for the identical mark with
the same or a wider specification of goods and services. An
extension of the specification of goods and services via the Madrid
Protocol is not possible. Applications are filed through the
Trademark Office of the applicant's home application or
registration ("office of origin") in one chosen language
(English, French or Spanish), without the need to appoint or use an
external representative. Refusals, if any, are issued individually
by the Trademark Offices in each designated country. Additional
countries can still be included via "subsequent
designation" at a later time. Changes to the WIPO
registration, such as limitations of goods and services, changes of
ownership, recording of licenses or cancellations are recorded in
one single operation. All official fees are payable in Swiss
Francs.
The Basic Fee of an application is SFR 653.00 (ca. INR 24,000)
and covers an application in up to 3 classes. Any additional class
requires payment of a supplementary fee of SFR 73.00 per class (ca.
INR 2,650). For every designated member country, the applicant has
to pay a complimentary fee of again SFR 73.00. Apart from the
original fee system, there is a number of member countries to the
Madrid Protocol that have made use of...
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