This article is written by Sagar Sarkar, George School of Law, Fresher, LLB(Hons) during an internship at LeDroit India.
ABSTRACT
The Madrid Protocol part of the Madrid System proves to be an efficient means for the registration of international trademark protection from a single application covering as many as 131 countries. The WIPO administers the Protocol that simplifies trademark registration by bringing together applications, languages, and currencies into one system. This article explains the rules of eligibility, application procedures and illustrates how the Protocol assists businesses in worldwide protection of their brands.
Some advantages it offers for the owner are the savings on administration expenses, simplification of trademark renewals management, and prospects to obtain further protection even after registration in other countries. However, national laws in the cited countries will determine the actual extent of protection. This paper addresses the Madrid Protocol’s value for business to secure intellectual property rights in several territories, illustrating practicality and efficiency.
KEYWORD
- Madrid Protocol
- International trademark registration
- World Intellectual Property Organization (WIPO)
- Trademark protection
- Global brand protection
- Trademark application process
INTRODUCTION
Trademark registration is an essential step in protecting the intellectual property rights tied to a brand. However, trademark registration can be complicated and costly for businesses operating in multiple countries, since the application process, fees, and legal requirements vary from country to country. The Madrid Protocol, established in 1989, enables businesses to file a single application to protect trademarks in different jurisdictions through a procedure governed by WIPO. This is part of the larger Madrid System that simplifies the process, thus making it more accessible and inexpensive for companies to acquire rights in various trademarks in several countries.
The Madrid Protocol offers numerous advantages to businesses, among which is the single, integrated application process, centralized management, and reduced expenses. However, interaction with the Madrid Protocol requires understanding the legal framework as well as the specific requirements of each member country, because every country’s intellectual property office has its own procedures for analyzing and enforcing trademark registrations. This article deals with the basic premises of the Madrid Protocol, analyzing requirements for eligibility, procedure for application, and associated benefits while applying for international trademark protection.
BRIEF HISTORY
To begin with, it is imperative to understand that trademarks are territorial. The right to use and police a mark is generally obtained though registration in a particular country, subject to that country’s legal prerequisites. Once a trademark is registered in a particular country, the protections afforded to the registered mark do not extend outside that country. For example, if you register a mark in the U.S., meeting the U.S. Patent and Trademark Office (USPTO) requirements, your mark will enjoy all of the protections afforded by the Lanham Act and any common law rights prescribed by U.S. law. However, if you use that same mark in Brazil, there are no legal protections for that mark in Brazil unless you also register the mark in Brazil, subject to Brazilian legal requirements.
With roughly 195 independent countries in the world, obtaining trademarks in each country would be an arduous and costly endeavor. To help streamline efforts to offer universal trademark protections in the burgeoning global economy, the World Intellectual Property Organization (WIPO) established the “Madrid System.”
The Madrid System is comprised of two international treaties: the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Agreement”), and the Protocol Relating to the Madrid Agreement (the “Madrid Protocol”). The Madrid Agreement was concluded in 1892 with the purpose of providing an international registration system. The treaty failed to achieve this objective, largely because of lack of support from major trademark registrants like the U.S., United Kingdom, and Japan. The Madrid Agreement also failed to set up an international system because it did not require a trademark owner to first register their mark in their home country. With no home registration upon which international registration would be based, policing a mark internationally would be logistically impossible. In order to confront the growing concerns with home registration and to leverage support from key players like the U.S., WIPO issued the Madrid Protocol in 1989.
THE MADRID SYSTEM FOR INTERNATIONAL TRADEMARK REGISTRATION
The Madrid System is a streamlined international trademark framework that simplifies registering and managing trademarks in multiple countries. Administered by the World Intellectual Property Organization (WIPO), it enables trademark owners to apply for protection in over 120 member countries of the Madrid Union by filing a single international application and paying one set of fees. This system facilitates the central management of trademarks, allowing for easy modifications, renewals, and expansions of trademark protection globally through a unified platform.
ELIGIBILITY CRITERIA FOR USING THE MADRID SYSTEM
To be eligible to use the Madrid System for international trademark registration, there are specific criteria that must be met:
- Nationality or Residency: You need to be a national of or have a domicile or active business operations within any of the 130 countries represented by the 114 members of the Madrid System.
- Existing Trademark Application or Registration: You must already have a trademark application or registration (often called the “basic application” or “basic registration”) filed with the Intellectual Property (IP) Office of a Madrid System member country or region.
ADVANTAGES OF THE MADRID SYSTEM
The Madrid System administered by the World Intellectual Property Organization (WIPO), provides a streamlined and efficient method for internationally securing and managing trademark protection. This system is advantageous for businesses of all sizes, from small startups to large multinational corporations, as it simplifies the processes involved in brand management across various markets.
Key Advantages of the Madrid System:
- One international application based on a basic application/registration
- One language (English, French or Spanish)
- One set of fees in one currency (CHF)
- One registration number and one renewal date
- The registration can be further extended geographically
- All subsequent changes to the international registration may be recorded with the IB and have effect through one single procedure
- Offices do not need to examine for formal requirements
With over 1.7 million registered trademarks, the Madrid System is preferred for global trademark registration among brand owners looking to expand internationally.
INTERNATIONAL TRADEMARK REGISTRATION PROCEDURE
The international trademark registration process primarily utilizes the Madrid System, offering a streamlined and cost-effective approach for registering and managing trademarks globally. Here is a detailed overview of the international trademark registration procedure:
- Global Trademark Search: Before applying for international trademark registration, the applicant must perform a global trademark search. This can be done using the WIPO’s Global Brand Database to check for similar or identical trademarks that are already registered. It’s essential to ensure that no conflicting trademarks exist in the Madrid Protocol countries where the trademark registration is intended. If a conflicting trademark is found, the application may be rejected.
- Basic Application or Registration: You must first have an existing trademark application or registration (the basic mark) in your home country’s trademark office. This acts as the foundation for your international application.
- International Application: You can file a single international application through the World Intellectual Property Organization (WIPO). This application allows you to choose the member countries of the Madrid System where you wish to protect your trademark. Depending on local regulations, you can submit this application directly to WIPO or through your national or regional trademark office.
- Designation of Countries: In the international application, specify the Madrid System member countries where you seek trademark protection. These designations indicate where you plan to use your trademark actively.
- Payment of Fees: The fees for international registration include a basic fee and additional fees for each country you designate. These fees may vary depending on whether your trademark application is for a black-and-white or colour mark and how many classes of goods or services you are registering.
- Examination by WIPO: WIPO reviews your application for compliance with the Madrid System’s requirements. If your application meets all criteria, WIPO will record your trademark in the International Register and publish it in the WIPO Gazette of International Marks.
- Examination by Designated Countries: Following approval from WIPO, each designated country will conduct its review based on local trademark laws. This may include checks for conflicts with existing trademarks and adherence to local regulations.
- Notification of Decisions: WIPO will inform you of the decisions from each designated country’s trademark office. If any country refuses protection, you can address these refusals directly with the respective country’s office, typically requiring the involvement of local agents or attorneys.
- Protection and Renewal: If granted, your international registration protects your trademark in the designated countries for 10 years from the registration date. This protection can be renewed for subsequent 10-year periods. You can manage your registration through WIPO, including handling renewals, adding new country designations, and changing your registration.
- Management of the International Registration: You may need to record changes with WIPO throughout the life of the international registration, such as changes in ownership or updates to the holder’s name or address.
- Use Requirements: In many jurisdictions, active use of the trademark is necessary to maintain registration. In some countries, you may need to provide proof of use to prevent cancellation.
PROCEDURE FOR INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL
TRANSFORMATION
Where the international registration is canceled because of extinction of basic application or registration and the person who was the older of the international registration files an application for the registration of the same mark with the Office of any of the Contracting Parties in the territory of which the international registration had effect, that application shall be treated as if it had been filed on the date of the international registration Provided that such application is filed within three months from the date on which the international registration was canceled and such application complies with all the requirements of the applicable law including the requirements concerning fees.
INDIA’S ACCESSION TO THE MADRID PROTOCOL
India became a member of the Madrid Protocol on July 8, 2013, marking a significant milestone in the country’s intellectual property landscape. This accession allowed Indian businesses to register their trademarks in multiple jurisdictions through a single international application, streamlining the process and reducing costs. It also opened up India to foreign businesses, enabling them to register their trademarks in India under the same simplified system.
India’s accession was part of its broader commitment to strengthening its intellectual property rights (IPR) regime, aligning it with global standards. The move benefited both Indian companies looking to expand globally and foreign businesses seeking protection in India, one of the world’s fastest-growing markets.
Through the Indian Trademark Office, businesses can now file an international trademark application under the Madrid Protocol, designating other member countries for protection. The process is administered by the World Intellectual Property Organization (WIPO), making it easier for Indian brands to protect their trademarks in multiple jurisdictions while simplifying renewals and modifications.
India’s accession has thus played a crucial role in promoting international trade by providing Indian businesses with more accessible pathways for protecting their intellectual property globally and enhancing its attractiveness to foreign investors.
CASE LAWS
Several case laws illustrate the application and interpretation of the Madrid Protocol in India. One notable case involves Tata Sons Limited v. Manuel Exports[1], where Tata Sons, a leading Indian conglomerate, filed a trademark under the Madrid Protocol for the famous “TATA” mark. This case emphasized the importance of international trademark protection, and the court reinforced the significance of the Madrid Protocol in protecting trademarks from infringement across borders.
Another important case is Sun Pharma Laboratories Ltd. v. Cadila Healthcare Ltd.[2], where Sun Pharma filed for trademark protection through the Madrid Protocol. The case highlighted procedural aspects of filing international applications and the significance of establishing priority rights under the Madrid System.
Nespresso v. Dualit (2013)[3] – United Kingdom
In this case, Nestlé’s Nespresso applied for trademark protection for their coffee pod design under the Madrid Protocol. Dualit a competitor argued against the application claiming that the design was not distinctive. The UK court ultimately sided with Dualit showcasing the flexibility of national trademark offices in assessing the merits of Madrid Protocol applications and ensuring that registrations do not confer unjust monopolies on non-distinctive marks.
Apple Inc. v. Samsung Electronics Co. (2012)[4] – Multiple Jurisdictions
This landmark case involved a multi-jurisdictional trademark dispute between Apple and Samsung regarding design and functionality trademarks for smartphones. While the case predominantly focused on patents, it also demonstrated the importance of cross-border trademark filings under the Madrid Protocol, as both companies had registered their trademarks in multiple jurisdictions through this system. This global case highlighted the role of the Madrid Protocol in managing trademark protection across different countries.
Bayer AG v. Union of India (2017)[5] – India
In this case, Bayer AG, a German pharmaceutical giant, filed for trademark protection for its drug under the Madrid Protocol, designating India for registration. The Indian court faced the challenge of balancing Bayer’s international trademark rights with national public interest concerns. This case underscored the tension between domestic legal frameworks and the global Madrid Protocol system.
BMW AG v. Ronayne (2007)[6] – European Union
BMW, the German automobile manufacturer, used the Madrid Protocol to file for international protection of its iconic roundel logo. The dispute arose when Ronayne a UK-based individual, attempted to use a similar mark for his company. BMW enforced its international trademark rights successfully, demonstrating the efficiency of the Madrid System in enforcing trademark rights across multiple jurisdictions.
Tiffany & Co. v. Costco Wholesale Corp. (2013)[7] – United States
This case involved Tiffany & Co. which had registered its trademarks internationally under the Madrid Protocol. Costco was accused of selling diamond rings advertised as “Tiffany” rings. Although the primary dispute focused on infringement in the U.S, the case highlighted the importance of securing international protection for iconic brands and reinforced the value of the Madrid Protocol in supporting global enforcement actions.
CONCLUDING REMARKS
The Madrid Protocol offers a streamlined and cost-effective way to secure international trademark protection, providing access to over 131 countries with one application. Its centralized system for filing, management, and renewal makes it an attractive option for businesses looking to safeguard their brands on a global scale. However, it is important to note that the specific trademark laws of each designated country will determine the ultimate scope of protection, so working with legal experts familiar with international trademark law is recommended.
By leveraging the Madrid System, businesses can efficiently protect their intellectual property across multiple markets, making it an essential tool for global brand management.
CONFLICTS OF INTEREST
Research details have been collected from publicly visible and accessible web based materials which have been free from any watermarking or any legal constraints. Thus the authors declare no conflicts of interest.
REFERENCES
- https://www.wipo.int/portal/en/index.html
- https://www.wipo.int/treaties/en/docs/pdf/madrid_marks.pdf
- https://treaties.un.org/doc/Publication/UNTS/Volume%20828/volume-828-I-11852-English.pdf
- http://www.ipindia.nic.in/
- https://www.indiafilings.com/international-trademark-filing
- https://apexlg.com/international-trademark-planning-a-brief-history-of-international-trademark-law/
[1] Tata Sons Limited vs Mr. Manu Kishori & Ors. on 9 March, 2001 – https://indiankanoon.org/doc/542243/
[2] Sun Pharma Laboratories Ltd. v. Cadila Healthcare Ltd. – https://indiankanoon.org/doc/54869924/
[3] Nespresso v. Dualit (2013) – https://www.fieldfisher.com/en/services/intellectual-property/intellectual-property-blog/dualit-wins-nespresso-coffee-capsule-patent-dispute
[4] Apple Inc. v. Samsung Electronics Co. (2012) – https://casetext.com/case/apple-inc-v-samsung-elecs-co-152
[5] Bayer Corporation vs Union Of India & Ors. on 22 April, 2019 – https://indiankanoon.org/doc/85364944/
[6] BMW AG v. Ronayne (2007) – https://ie.vlex.com/vid/bayerische-moteren-werke-aktiengesellschaft-793407521
[7] Tiffany & Co. v. Costco Wholesale Corp. (2013) – https://law.justia.com/cases/federal/appellate-courts/ca2/17-2798/17-2798-2020-08-17.html
