LAW MANTRA THINK BEYOND OTHERS

(National Monthly Journal, I.S.S.N 2321 6417)

Madrid Protocol: A boon for Indian Entrepreneurs

One application, in one place with one set of documents in one language with one fee in one currency resulting
in one registration with one number and one renewal date covering more than one country
1


INTRODUCTION
Trademarks play a very significant role in a global marketplace. Now-a-days, Trademarks are
world over known to constitute words, names, letter, numeral, graphical representations in the
form of configuration of goods, labels, logos, packaging, combination of colors, etc. with
respect to goods or services, that are capable of distinguishing the goods or services of one
person from those of another.
2
Trademark law has undergone profound changes, both
multilaterally and regionally.
3
The Paris Convention was the beginnings of this international
trademark system. This Paris Union is extended by a special union, namely, the Madrid
Agreement. Then, the Madrid Protocol expedited the international filing system.
4
Although
trademark registration is not compulsory in India, a major advantage of registration is that it
confers a statutory monopoly and constitutes prima facie proof or evidence in the eyes of law
towards the creation of an exclusive right in favour of the owner of the trademark.
5

Infringement action under The (Indian) Trademarks Act, 1999, can be followed only for a
registered trademark. The Trade Marks (Amendment) Act, 2010 passed on September 21
st
,

1
The Madrid system for international registration of marks, (International Trademarks Association, New York)
2000, p.8, http://www.inta.org/
2
Christine Chiramel, The Madrid Protocol And Its Applicability In India, Associates, Vanish Associates
Advocates Available at www.vaishlaw.com/.../indian.../applicability_of_madrid_protocol_in_india.pdf
3
Marshall A. Loafer, the New World of International Trademark Law, 2 Marq. Intell. Prop. L. Rev. 1., 1998
4
Bingbin Lu, Madrid System for the International Registration of Marks: An Updated Overview, Intellectual
Property Studies, Vol. 17, pp. 226-246,
5
Ibid, note 1.
2010 will bring the Madrid Protocol into force in India, once it is notified. This will enable
applicants to make a single international application for trademark registration across
numerous countries granting widespread trademark protection rights. Before
deliberatingabout exactly how Madrid protocol is advantageous for Indian entrepreneur, the
researcher desires to go through with the Madrid system & Protocol.
MADRID AGREEMENT
In 1891, some of the Paris Convention countries met in Madrid to create a uniform system for
the international filing and registration of trademarks. Their product, the Madrid
AgreementConcerning the International Registration of Marks, took an important step in
international trademarks protection.
6
It has since than undergone a number of revisions. The
last revision took place at Stockholm in 1967, and as amended on September 28, 1979. So
another name of Madrid agreement is the Stockholm Agreement. The Madrid Agreement
allows Member citizens toobtain trademark rights in other Members by a single filing with
their home country's trademark office with directions to file the application with the
InternationalBureau created by the Paris Convention.
7
However, loss of trademark rights in
the home country results in similar losses in the other Member countries ("central attack"),
and enforcement continues the Paris Convention method of requiring suit in the alleged
infringer's country.
Under the Agreement, the owner of a home country trademark registration, commonly
referred to as the "basic registration, "may filean international application with its national
trademark office designating those other membercountries in which extension of protection
is desired, which issues an international registrationfor the mark, publishes the mark in
the international trademark gazette and forwards the application to the designated
countries for examination pursuant to national law.
MADRID PROTOCOL
The Madrid Protocol Relating to the Madrid Agreement Concerning International
Registration of Marks (Madrid Protocol)
8
was enacted in 1996 as an extension of the Madrid

6
Madrid Agreement Concerning the International Registration of Marks, April 14, 1891, 828 U.N.T.S. 389, 1
Basic Docs. International Econ. L. 781 (CCH 2008).
7
Madrid Agreement, Id, Art. 1 (2).
8
A copy of the treaty, the implementing regulations and other information is availableat
www.wipo.int/madrid/en/index.html
Agreement. Though similar in many respects to the Madrid Agreement, the Protocol includes
a number of innovations designed to make it possible for the countries to join the
Madrid system. During its first 20 years, WIPO was a strong force in the administration of
international conventions, but ineffective as a catalyst in the movement toward
harmonization.
9

In order to garner the bundle of national rights in other countries available under the Madrid
Protocol, an application for International Registration is submitted in the home country. This
application lists the member countries to which the applicant desires protection to be
extended. Though an International Registration certificate is given at the time of filing, this
No changes will be made to the document, but the result of the examination process that
occurs over the next 18 months confers enforceable rights on the owner of the International
Registration. To be certain of the validity of the mark in member states, a certified copy of
the registration showing the current status of the International Registration may be ordered
from the World Intellectual Property.
THE MADRID SYSTEM
Both the Protocol and the Agreement (collectively, the Madrid System) are administered by
the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland.
There established an Assembly of Special Union as the fundamental body and an
International Bureau as the administrative body of this system. The goal of the Madrid
System is to streamline the process of obtaining global trademark protection. The Madrid
Agreement and the Madrid Protocol are independent, parallel treaties, with separate but
overlapping memberships.
This International Trademark System gives a trademark owner the possibility of having a
mark protected in up to 89 countries
10
by filing one application, in one language, with one set
of fees, in one currency. Thereafter, the international registration can be maintained and
renewed through a single procedure. An international registration under the Madrid system
produces the same effects as an application for registrationof the mark made in each of the

9
In 1987, the United States General Accounting Office concluded that, although WIPO was the foremost
multilateral intellectual property forum, it had made little progress toward strengthening international
intellectual property rights. A main reason for this failure, the GAO opined, was U.S. refusal to consider the
needs of developing nations for more flexible intellectual-property protection that the other major
industrial nations were willing to provide. Onique L. Cordray, GATT v. WIPO, 76 J. PTO Soc'y 121, 124
(2004).
10
These are the total number of member countries updated till January, 13Available at
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.
countriesdesignated by the applicant. If protection is not refused by the trademark office of a
designatedcountry, the protection of the mark is the same as if it had been registered by that
office.
11
Thesystem provides a cost-effective and efficient way for trademark holders to
ensure protection fortheir marks in multiple countries through the filing of a single
application.
APPLICANT REQUIREMENTS
A Madrid application can be filed by a natural person, or legal entity, having real and
effective industrial or commercial establishment status, or being a domicile, or being a
national of a Madrid Union Member Country.
12
The Madrid Protocol allows applicants to
choose the exact countries in which they seek protection.
APPLICABILITY OF THE MADRID SYSTEM IN INDIA
On 8th February 2007, the Union Cabinet ratified Indias accession to the Madrid Protocol.
The Trade Marks (Amendment) Act, 2010 was passed on 21st September, 2010 to bring into
force the Madrid Protocol in India; although the same is still to be implemented i.e. the
effective date for the Amendment Act to come into force has not yet been notified. One of the
major changes brought about by the amendments include Section 23 (i)
13
wherein the
registration process for a mark is to be completed in a time bound manner within eighteen
months of the filing of the application. This change will challenge every aspect of the
registration process within trademark office in India, forcing deadlines at every stage of the
registration procedure laid out under the Trademarks Act and supplemented by the
Trademark Rules in India. Another major amendment to be implemented is the insertion of a
new Chapter IVA in the principal Act in light of international applications and registrations
under the Madrid Protocol.
PROCEDURE FOR AN INTERNATIONAL APPLICATION UNDER THE MADRID
PROTOCOL
Upon India being a signatory to the Madrid Protocol, the applicant, while making an
international application to the National Office on Form MM2, may select from the list of the
member countries where he seeks protection of mark. The application form may be filled out

11
Ibid, note 4.
12
Supra Note 2.
13
The (Indian) Trademarks Act, 1999.
in English, French or Spanish and is subject to the payment of a basic fee, complementary fee
for each designated Contracting Party (member country) and a supplementary fee for each
class of goods and services. Such fee may be payable to WIPO directly or the Office of
Origin which may charge an additional handling fee, and thereafter the following procedure
will be followed:
1. The Office of Origin in the country of origin examines whether the international
application corresponds to a mandatory basic application or basic registration and
complies with home state requirements.
A Basic application defined under Section 36 B (b) of the Trade Marks (Amendment) Act,
2010 is an application for registration of a trademark filed under Section 18 of the Act, and
which is used as a basis for applying for an international registration. Basic registration
defined under Section 36 B (c) is the registration of a trademark under Section 23 of the Act,
and which is used as a basis for applying for an international registration. The Office of
origin must certify that under Article 3 (1) of the Protocol the mark is the same mark as that
in the basic registration, or basic application, certify the initial date on which it received the
request to present the international application.
2. The application should be received by the International Bureau from the Office of Origin
[Article 3 (4) of the Protocol] within two months of that initial date of receipt of the
application by the Office of Origin, that initial date will be the date of the international
registration. The International Bureau examines that the international application
complies with the requirements of the Madrid Agreement or Protocol, Common
Regulations concerning the implementation of the Protocol, the indication of goods and
services and their classification, required fee payment and other basic administrative
requirement.
The International Bureau informs the Office of origin and the applicant of any irregularities;
these must be removed within three months, otherwise the application will be considered
abandoned. On successful examination the InternationalBureau then Records the mark in the
International Register, publishes the mark in the Gazette, and notifies each contractingparty
or member country that are the designated countries listed in the application, asking fortheir
consequent approval, and granting of registration.
3. On further examination of the Office of a Contracting Party in the exact procedure
adoptedfor a direct national application, if grounds for objection arefound during the ex
officio examination, or if an opposition is filed, the Office can declare a provisional
refusal(within 18 months of receipt of the applications notification from the
International Bureau for India) for protection of the mark in that member country.
REFUSAL OF PROTECTION BASED ON OPPOSITIONS
Article 5 (2) (c) of the Madrid Protocol states that such refusal by the National Office of
designated country based on oppositions can be made post the expiry of the 18 month time
limit from notification receipt, provided it has, before the expiry of the time limit, informed
the International Bureau of the possibility that oppositions may be filed after the expiry of the
time limit, and the notification of the refusal is made within one month from the expiry of the
opposition period and, in any case, not later than seven months from the date on which the
opposition period begins.
A provisional refusal if declared by a member state is recorded in the International Register
by the International Bureau, and further published in the International Gazette, along with the
transmission of a copy to the holder of the international registration. All Post refusal
procedure is carried out directly between the holder and the Office concerned, such as review,
appeal, or response to an opposition.
On completion of above procedures, a statement is sent to the International Bureau indicating
the provisional refusal is confirmed, or totally withdrawn, or partially withdrawn. This
statement is also recorded in the International Register and published in the Gazette. If no
objection is received by the International Bureau from the designated Member States, within
the prescribed time limit i.e. normally twelve months (extended to 18 months under the
Protocol for India), or a grant of protection is issued by the Member State Office, it is
deemed to be accepted by the Member State and the mark will then have the same
protection as registered national marks in that country.
The duration of protection granted by an international registration is 10 years, before which a
renewal application must be filed to extend protection. A renewal grace period of 6 months
may be granted under Section 36G (2) of the Act.
DEPENDENCE ON THE BASIC MARK (ARTICLE 6 OF THE MADRID
PROTOCOL)
Under Section 36 E (8) for a period of five years from the date of an international
registration, if the initial basic national registration ceases to have effect, through a
cancellation following a decision of the Office of origin, or court, or voluntary cancellation,
or non-renewal, the international registration will no longer be protected. Where the
international registration was based on an application in the Office of origin, it will be
canceled if, and to the extent that, that application is refused or withdrawn within the five-
year period, or if, and to the extent that, the registration resulting from that application ceases
to have effect within that period.
The Office of origin is required to notify the International Bureau of facts and decisions
concerning such ceasing of effect or refusal. The cancellation is published in the Gazette and
notified to the designated Contracting Parties. After the expiry of the period of five years
from the date of international registration, the registration becomes independent of the basic
registration or basic application.
SCOPE OF AN INTERNATIONAL REGISTRATION
An international registration is deemed to replace a national or regional registration for the
same mark under Section 36E (6) of the (Indian) Trademarks Act and Article 4bis of the
Protocol. If the national or regional registration is not renewed, the holder of the international
registration may continue to benefit from the earlier rights acquired by reason of that national
or regional registration.The holder of an international registration can expand the
geographical scope of the protection of his mark by filing a subsequent designation.
The following may also be recorded in the International Register:
(i) A limitation of the list of goods and services in respect of all or some of the
designated Contracting Parties;
(ii) A renunciation in respect of some of the designated Contracting Parties for all the
goods and services;
(iii) A cancellation of the international registration in respect of all the designated
Contracting Parties for all or some of the goods and services;
(iv) A license granted in respect of all or some of the designated Contracting Parties, and
for all or some of the goods and services.
Information concerning changes, cancellation and licenses are published in the Gazette and
notified to the designated Contracting Parties.

INDIAS ACCESSION TO THE PROTOCOL - PROS & CONS
The Indian trademark practice of filing applications in each country for registration and
tracing them simultaneously is quite time consuming and expensive. For that reason, it is a
boon for India that it has become a member of the Madrid system, and we should realize the
advantages of the same since it enables an applicant company seeking international
registration to file only one application and pay only one fee in local currency.
The trademark protection under Madrid Protocol may be extended to additional jurisdictions
at any time, as and when they join the Madrid system. A mark registered under the Madrid
system is deemed to get the same protection as if it is being directly registered in each
country. If the trademark office of a designated country does not refuse protection within a
specified period, the protection of the mark is the same as if it had been registered by that
office.
It is also pertinent to note that under the Madrid system the applicant can make any change of
name, address and so on and so forth and also renew the registration across all applicable
jurisdictions through a single administrative process.
The pharmaceutical industry is the major beneficiary of Indias decision to join the Madrid
Protocol and the benefit derived by the Pharmaceutical industry is also seen to have
percolated to other industries such as Coffee, Tea, and Cocoa and Electronic industry
14
.
Though the corporate houses are set to gain a lot by this step taken by India but it will not be
so for the small sector industries owing to the high cost involved in registration.
Another major criticism is that the Madrid Protocol still retains dependency of the
international registration on the existence of the basic registration. Although under the
Madrid system the number of international registrations subjected to a central attack is less
than 1%
15
, there seems to be a lack of policy consideration behind inserting such a provision.
This is especially so when each national office has been given sufficient time to enable them
to invalidate trademarks based on their domestic law, including opposition proceedings.

14
K.K.Sharma, Should India join Madrid Protocol, Advocate and IPR consultant, Halsburys Law, March 2008.
15
Protecting your trademark abroad: 20 questions about Madrid Protocol (WIPO, Geneva) 2001, at p.13.In
2000, nearly 23000 international registrations were effected; during the same period, only 140 international
registrations were cancelled (in whole or in part) as a result of the central attack.
Further, if the registration in India is invalidated on the ground that the trademark is in
violation of an earlier mark,
16
then the impugned mark automatically loses its protection in
other countries even if the infringed earlier mark did not even exist in that other country!!!
However, the risk of central attack is mitigated by the introduction of the possibility of
transformation. Thus, the filing date of the international registration will be maintained.
Although, the Protocol mitigates such attacks by way of the principle of transformation,
transforming the application into a direct national application may be more costly and time-
consuming than filing separate national applications
17
.
In the fairness of the scheme, it seems beneficial for India to have joined the Madrid Protocol
and help Indian business community to get international registration of their trademarks at
affordable cost and on a time bound manner. However, infrastructure and the resources
available to Indian trademark registry need to be strengthened and training has to be imparted
to the officials of Trademarks Registry to be able to handle such international applications.
Similar training is also desirable for the legal fraternity with assistance from WIPO.
It is often found that the filing rate is quite high in case of member countries having
depository system as against the countries which follow comprehensive system of
examination of applications for registration of trademark. Accordingly, the filing rate of
application for registration of trademarks in India is quite high and the infrastructure and
resources available with the Indian Trademark Registry are insufficient as compared to other
countries having lesser or same filing rate. Although the Indian Trademark Registry has
cleared the backlog of five years by ad hoc measures so that it could be in a position to join
Madrid Protocol, yet it needs a long term strategy so as not to allow the backlog to resurface
since the human mechanism cannot be sustained for long. This requires strengthening of the
infrastructure and raising IT level supports
18
.
The IT system in the Indian Trademarks Registry needs a holistic revamping for which strong
support is needed from Indian Government and WIPO, together with the assistance of a team
of dedicated officers. As of today, the working strength of officers therein is sufficient to
discharge the day to day statutory duties. If these officers are diverted, a strong possibility of

16
Trademarks Act 1999, Sec 33.
17
CeledoniaBaila.H. & Epstein Jeffrey H, Limitations of the Madrid Protocol for US companies, Practicing Law
Institute: Patents, Copyrights, Trademarks and Literary Property, Course handbook series, 387 (2004), 257-
284.
18
Online registration of trademark applications in all the regional offices and headquarters has begun from
October 2002 and a digital database library on CD-ROMs of 150000 Trademarks Certificates and 1250
Trademarks Journals has been created.
the backlog resurfacing exists. A solution for this is to hire experts from technical as well as
legal fields.
It is often debated that the concept of e-filing cannot be achieved by India. But the
Intellectual Property Offices in India have commenced e-filings of patents and trademark
applications. Now applicants can file their patent and trademark applications from anywhere
in the world at any time as per their convenience with the help of the internet. Payments can
also be made through the Payment Gateway of authorized bankers, which will save time and
money and the hassles involved in visiting and filing the applications in the offices
19
. A major
program of modernization of the infrastructure of Intellectual Property offices of India
costing Rs. 153 crore was implemented during the 10th Five Year Plan. Computerization has
been one of the key components of the modernization initiative. As part of this, facilities have
been created for e-filing of patent and trademark applications
20
. Soon, the complete process
of grant of patent or registration of trademarks will become online and the Indian Patent and
Trademarks Offices will function almost as paperless offices. The modules for the e-filing
and online processing have been developed by the National Informatics Centre. Thus with the
launching of the e-filing facility the first phase of the modernization drive comes to an end.
Factors like difficulties over delay and the differences in level of strictness of Indian
Registries compared to their foreign counterparts are such that can have serious implications
in India while implementing the Madrid Protocol. There would be a penalty on Indian
trademark owners if the Indian trademark registry does not transmit and ensure receipt of
their international applications by the International Bureau within two months of filing. In
such an event, instead of the date of filing, date of receipt by the IB would become the date of
the international application. If the Indian trademark registry does not expedite its processing
it would put its nationals at a relatively disadvantaged spectrum since offices of other
countries work faster.
It is also notable that to oppose the extension of international applications into India, notice of
publication of both, international registrations and of recordals of extension, would have to be
taken from the Gazette of the International Bureau even though it warrants that a few copies

19
India to file application for ISA and IPEA recognition soon, - Kamal Nath launches e-filing of patent and
trademark applications. The Hindu, 20 July 2007. Shri. Kamal Nath, the former Union Minister of
Commerce and Industry, has launched the e-filing of patent and trademark applications, at the function
organized by the Department of Industrial Policy and Promotion (DIPP).
20
Here are only a dozen or so countries which have e-filing facilities at present and India now gets into this elite
group consisting of countries like USA, Japan, South Korea, China and the European Patent Office.
shall be furnished to the Indian trademark registry. From the date of the international
registration or recordals in favour of a foreign trademark, its protection in India will also
commence as if the mark had been deposited directly with the Indian trademark registry. This
will require the Indian trademark owners to engage internationally savvy trademark agents.
Though this step would result in a burdensome expense for some Indian trademark owners
yet, it is necessary so as to safeguard their rights.
The Bill provides that the Indian Registrar of trademarks will be empowered to take up
applications from the countries that are the part of this Protocol; But this sure to become an
additional burden for the Registrar of Trademarks Office. Further, no clear procedure has
been laid down in the Bill regarding the processing of the international and domestic
applications.
Further, the Bill also fails to look into the aspect of providing protection to the non-visible
marks. In the present scenario, protection of these non-visible marks has gained a lot of
importance on the international front. But the proposed Bill does not contain any references
about this new emerging branch of trademark.
CONCLUSION
On concluding, the researcher wants to say that there is no time limit to apply for an
international application once a national application/ registration is pending or granted. The
international application depends on a mandatory basic national application or registration as
long as it is pending and valid. If either fail before the international registration is granted or
within 5 years of the international registration being granted, the international application/
registration will also become invalid. There is no specific provision explaining the procedure
for dealing with oppositions or replies between the Indian registry and the international
applicant with regard to an international application filed abroad and notified to India by the
International Bureau for registration.
Further, Indian Trademark Rules also specify that an applicant should have an address for
service in India which will apply to International applicants once the Madrid Protocol is
effectively implemented through the notification of the Amendment Act, 2010. Nothing in
the amendment act specifies opposition proceedings in international Madrid applications
where India is a designated country. The Amendment act increases the period for notice of
opposition to 4 months. India will have to amend the trademark registration procedure rules
for a smooth transition into a Madrid system procedure and post amendment
registrationprocess.
Advantages of the Registration under the Madrid System are single application for trademark
protection in numerous Madrid member countries, wider protection, single fee for trademark
application in one language (English or French), Speedy and cost effective process of
registration.
By- Mohammad Nizam Ashraf Khan, Assistant Professor, School of Law, Galgotias University,
Greater Noida
and
Mohammad Umar, Research Scholar, Faculty of Law, Jamia Millia Islamia, New Delhi.