International Registration of Trademarks under Madrid Agreement

The increasing importance of international trade has led to practices that can no longer be adequately tackled with the traditional concept of protecting a trademark against the use of an identical or confusingly similar mark on competing goods. To overcome these deficiencies, the Madrid Agreement was implemented in 1891.

Introduction:

A trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors. A trademark can be protected on the basis of either use or registration. Both approaches have developed historically, but today trademark protection systems generally combine both elements. The Paris Convention for the Protection of Industrial Property of March 20, 1893 (Paris Convention) places contracting countries under the obligation to provide for a trademark register.

The increasing importance of international trade has led to practices that can no longer be adequately tackled with the traditional concept of protecting a trademark against the use of an identical or confusingly similar mark on competing goods.

Who can apply for a trademark?

In general, any person who intends to use a trademark or to have it used by third parties can apply for its registration. That person can be either a natural person or a legal entity, even a holding company.

Trademark Licensing:

It is common practice for trademark owners to license third parties to use their trademarks locally in the country where they exercise their own business. However, the main importance of the possibility of licensing the use of trademarks lies in its usefulness in international business relations. Licensing is indeed the principal means whereby the trademarks of foreign companies are used by local businesses. Such license agreements are very common between partners from different developed countries, and they do exist between partners who both originate in developing countries, or even between a licensor in a developing country and a licensee in a developed country.

Service Mark:

A service mark is very similar in nature to a trademark. Both are distinctive signs; trademarks distinguish the goods of one enterprise from those of others, while service marks fulfil the same function in relation to services. Trademarks and service marks can therefore be collectively defined as signs that individualize the goods or services of a given enterprise and distinguish them from the goods or services of its competitors.

Trademark Piracy:

Trademark piracy means the registration or use of a generally well -known foreign trademark that is not registered in the country (or is invalid as a result of non-use). The Paris Convention provides in its Article 6 that a well-known trademark must be protected even if it is not registered in the country. This is an important basis for the protection of well-known brands against piracy. Article 6 is restricted to identical and similar goods, however. Often well-known trademarks are used by pirates on totally different goods, or for services. Furthermore, courts sometimes require a trademark to be well known in the country and deny protection, even if the true owner of the trademark can prove that it is internationally well-known in a considerable number of countries. Improved protection against trademark piracy is therefore needed. Section 6(1) (d) of the Model Law extends protection to well-known trade-marks and trade names independently of the goods or services concerned. This is no doubt an important improvement, but it is still stipulated that the trademark must be well known in the country, a requirement that fail s to take sufficient account of the increasing importance of international trade.

Obtaining Protection for Marks in Several Countries: The Madrid System

It is established that trademarks have become a key factor in the modern world of international trade and market-oriented economies. This means, of course, that many manufacturers and traders need protection for their marks (trademarks as well as service marks) in more than one country, often in many countries all over the world.

On April 8th of 2013, India deposited the instrument of accession to the Madrid Protocol becoming the 90th Member of Madrid Agreement Concerning the Inter-national Registration of Marks (the Madrid Agreement).

Under the Madrid Agreement, an international registration can be filed with the International Bureau of WIPO in Geneva, with effect in all or a part of the countries party to the agreement, using one language, paying one set of fees only, to the Inter-national Bureau, and the period of protection of the international registration is the same (twenty years) for all countries in which the international registration has effect.

The Madrid Agreement is very popular among trademark owners in the contracting States, and it is widely used because it is extremely cost-effective and because it cuts down considerably on the administrative paperwork by offering protection in up to 34 countries by one single registration without any special formalities, such as notarial attestation and legalization. It is even possible to record name changes and assign the registration in some or all of the countries to which protection is extended by one single administrative act; and the international registration can be renewed in all countries to which protection extends simply by paying the renewal fees without further formalities.

Procedure for Registration under the Madrid Agreement:
  • Basic Registration:
The filing of an application for an international trademark registration must be based on a registration of the mark in one of the member countries, which according to Article l, paragraph 2 has to be the country of origin. This is the country where the applicant has a real and effective industrial or commercial establishment; failing such establishment, where he has his domicile; failing such domicile, the country of which he is a national.
  • Application:
The application for international registration is effected by filing a prescribed form at the appropriate office of the country of origin, which checks and certifies that the mark as it is reproduced in the application form is entered in the national register in the name of the applicant for the same goods or services, mentions the dates and numbers of the basic application and registration and also the date of the application for international registration , and forwards it to the International Bureau in Geneva.

The effects of the international registration extend to those member States which the applicant, in the international application, expressly requests (the request for the extension of the effects to States party to the Agreement is called a request for "territorial extension")
  • Examination of the International Bureau and Registration:
The International Bureau examines the application for international registration "as to form," i.e. it checks whether it complies with the provisions of the Agreement and its Regulations.

In case of an incomplete or incorrect application a delay of up to six months is given for rectification, failing which the application is considered abandoned and any fees already paid are reimbursed (Rule 11 (3) of the Regulations under the Madrid).

If the applicant has not indicated the class or classes according to the Nice Agreement, corresponding to the goods or services in respect of which protection is claimed, the International Bureau classifies the goods or services.

In case of incorrect classification or indications of goods or services which are too vague a procedure with delays similar to those applied for general irregularities is applied, the difference being that the International Bureau has the right to make proposals and, in case of difference of opinion with the office of origin, the proposals of the International Bureau prevail. If a supplementary fee has to be paid, the payment must be made within three months, failing which the application is considered abandoned and the fees already paid are reimbursed as mentioned under Rule 12(7) of the Regulations.
  • Effective Registration Date and Priority
The registration is effective as of the date of application for international registration in the country of origin, provided the application has been received by the International Bureau within two months thereafter.

Scope of Protection:

Through registration on the International Register, the trademark is protected in each of the countries to which it is extended, just as if the mark had been filed there separately. It is therefore not possible to speak under the Madrid Agreement of a unitary international trademark, with the same legal status in all countries in which it has effect.

However, it would not be correct to compare the international registration simply with a bundle of national trademark applications, since it goes doubtless beyond the effect of a national application. Just as clearly, it cannot have the full effect of a national registration. In fact, in all countries for which geographical extension is requested, the international registration is subject to the same process (examination on absolute grounds for refusal and-if applicable-on prior rights and/or opposition) as if it had been filed nationally with the qualification, however, that the protection cannot be denied on the basis of internal legal provisions which permit the registration only for a limited number of classes or a limited number of products or services as prescribed under Article 5(1) of the Agreement.

Period of Validity and Renewal:

The international registration is for all countries to which it extends valid for 20 years (Article 6). Under Rule 10 of the Regulations it is possible to pay the basic fee at the time of registration for an initial period of 10 years only. If the balance due before expiration of the 10 years period is not paid, the registration is cancelled ex officio.

After 20 years the international registration can be renewed s imply by paying the renewal fees (Article 7). The renewal can be effected for less than the initially covered countries, however, no other change of the registration is allowed on this occasion (Article 7(2) and Rule 25(6)). The renewal takes effect in all countries for which the complementary renewal fees are paid without any possibility for the national offices to pronounce a refusal of protection.