Brand owners get additional boost as Malaysia joins Madrid Protocol for international trademark registrations. This will streamline the trademark filing process across foreign jurisdictions within Asia for applicants based in US and Europe.
An international system of Trademark protection is established under the Madrid Protocol where a mark obtains protection in numerous countries using a single application, through international registration. A mechanism set up under the Madrid Agreement of 1891 (Madrid Agreement Concerning the International Registration of Marks) it works as a centrally administered registration system via the World Intellectual Property Organization (WIPO). Administered by the International Bureau of WIPO (Geneva, Switzerland) there are 104 member countries where each designated contracting party of a trademark application, has equal jurisdiction over the registered trademark.
The provisions of the Madrid Protocol and Agreement came into effect in India on and after the 8th of July 2013. The Minister of Commerce & Industry, Government of India submitted the “Instrument of Accession” to the Director General of WIPO on April 8th 2013.
An application can be initiated only through an online gateway with a handling fee of Rs.2000/-. However necessary verification is conducted by the Trade Mark Registry (TMR) in India.
The TMR inspects the eligibility of the applicant and the contents of the application, identifying whether it is a basic application or registration. the following are considered to be eligible to file an application:
(a) Citizen of India, or domiciled in India, or
(b) Who has a real and effective industrial or commercial establishment in India,
(c) Who has got a registration of the trademark or whose application for registration of trademark is pending in Indian office (A person, including a legal entity, who falls within these eligibilities may make an application on the e-gateway for international registration of his trademark)
Where the application made is not proper, the TMR sends a deficiency letter following which the latter must send a reply along with the supporting documents, if any, through the gateway. Once the application is determined as proper the TMR certifies and transmits such applications to the International Bureau of WIPO.
On the instance where the basic application or registration ceases to exist within the first five years from the date of the international registration, the TMR makes the necessary notifications to the International Bureau.
However, what must be noted that where the decision affects only some of the goods and services covered by the registration, the communication will indicate those. The International Bureau after recording such notification in the International Register shall transmit copies of the notification to the holder and to the offices of the designated Contracting Parties.
Where the application designating India, is registered by WIPO and the same is notified in India, the particulars are recorded in the TMR database by giving a national number to it as IRDI xxxxxx, equating the date of the registration of IRDI with the date of application for a national application.
Subsequently, the IRDI will be examined as a national application as per the provisions of the TRADEMARKS Act & Rules. In case of any objections any provisional refusal shall be communicated to WIPO. (This provisional refusal is communicated to the applicant, holder of the international registration)
The holder, may respond to the refusal and request this office to reconsider it only through an Indian Agent. The post examination stage will be just like that of the national application objected at the examination stage. Where all objections are removed after thorough re-examination or no objections were raised in the first place, the registration will be published in the Trade Mark Journal.
Once the TMR is satisfied that there are no oppositions and no grounds for refusal, within the prescribed period, it will notify the Grant of Protection of the international registration, to the WIPO.
The renewals, amendments or corrections of international registrations are done by the WIPO. The registration of a mark at the Bureau is for 10 years. Its is further renewable for another 10 years upon payment of the required fees to the WIPO.
Every change is recorded by the Bureau in the international register and accordingly notified to the offices of the designated Contracting Parties.
For reference as to guidelines laid down by the protocol for registration the CGPDTM has put up a document titled “ Guidelines for Functioning under the Madrid Protocol” on its official website.
Any doubts that arise out of the registration procedure or the functioning of the Madrid Protocol within our country are dealt with by the INTERNATIONAL REGISTRATION WING of the TMR. A telephone call for Queries or problems relating to the functioning of the Madrid Protocol may also be made at- +91 22 24134555 or +91 11 25300290.