Implementation Of The Madrid Protocol In India: A Convenient Way

Author:Mr Marcus Luepke, Ph.D
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
FREE EXCERPT

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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