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RAYAT COLLEGE OF LAW, ROPAR

PROJECT: - INTELLECTUAL PROPERTY

RIGHTS

TOPIC: MADRID PROTOCOL

SUBMITTED TO:
DR.CHARU
SUBMITTEDBY:
AMAN KUMAR
10TH SEMESTER
ROLL NO. 13306
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Acknowledgement

I would like to express my special thanks of

gratitude to my teacher Dr.Charu Dureja, who gave

me the golden opportunity to do this wonderful

project on the topic “Madrid Protocol” which also

helped me in doing a lot of Research and I came to

know about so many new things I am really thankful

to her.
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DECALARATION

I hereby declare that the project work entitled “

Madrid Protocol ” submitted to the Rayat College
of, is a record of an original work done by me under
the guidance of Dr.Charu Dureja , this project work
is submitted in the partial fulfilment of the
requirements for the award of the degree of law. The
results embodied in this thesis have not been
submitted to any other University or Institute for the
award of any degree or diploma.

(SIGNATURE)
AMAN KUMAR
Date:  
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Table of Contents

Introduction to Madrid Protocol 5

History and Origin of Madrid Protocol 5

Objective 6

Registration Requirements and Procedure 8

Challenge International Registration 10

Dependency and Central Attack Principles 11

India: Madrid Protocol In India: Pros and Cons 14

International Registration under the Trademark Act, 1999 15

Advantages: Madrid protocol in India 15

Disadvantages: Madrid Protocol in India 16

Conclusion 17
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Madrid Protocol
Introduction to Madrid Protocol:-1

The Madrid Protocol (formally the Madrid system for the worldwide
recognition of trademark) is the essential global framework for encouraging the
enrolment of trademarks in numerous purviews around the globe. Its legitimate
premise is the multilateral treaty Madrid Agreement Concerning the
International Registration of Trade Marks of 1891, and additionally the Protocol
Relating to the Madrid Agreement (1989). The framework gives a segment to
getting trademark protection in various countries as far and wide as could
reasonably be expected which is more effective than searching for security
autonomously in each individual country or jurisdiction.

The Madrid Protocol is a universal settlement, which was embraced in 1989

with a specific end goal to uproot the challenges that were discouraging a few
nations from consenting to the Madrid Agreement, the 1891 bargain that set up
the framework for the global enlistment of trademarks. By complexity, the
Madrid Protocol is a relative newcomer.. It started operation on April 1, 1996,
and is, just like the Madrid Agreement, a universal trademark documenting
framework among Contracting Parties that outcomes in the issuance of global
enrolments. The Protocol, which has been in power following April 1, 1996, has
turned into an advantageous and efficient method for securing trademark
enlistment in part nations in Asia, European nations, Africa countries , the
Western Hemisphere, the Middle East and the Pacific Circle.

HISTORY AND ORIGIN OF THE MADRID PROTOCOL:-2

The Madrid Protocol owes its presence to the production of the Community
Trademark framework and to the powerlessness of the 1891 Madrid Agreement
to pull in the participation of new nations. The Madrid Agreement was initially
expected to accommodate a universal registration framework, yet did not
accomplish this for two critical reasons:

 The absence of global acknowledgment. Some non-part nations,

including the United States, United Kingdom, Parts of America and even
Asian nations, for example, Japan, were not followers, which undermined

1
https://www.wipo.in
2
The Madrid Protocol: Impact of U.S. Adherence on Trademark Laws and Practice, International Trademark
Association, April 2003,
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acknowledgment of the framework as a genuinely "global"

administration. Together, a many of these countries speak to the biggest
quantities of trademark filings and enrolments on the planet, and
 The simple sending by the International Bureau of a uniform application
to part nations, instead of the enlistment of the relevant trademark in the
national trademark registers, ceases a genuine registration framework.

Participation of the Madrid Agreement was customarily restricted to some

European countries and North African nations, Asian parts, notably China. Be
that as it may are nations which were regularly looked for as nations of
destination of trademarks ensured somewhere else, and also nations having a
substantial residential exchange imprint base and hence inspired by sending out
imprints, had stayed beyond the legislation of the Madrid Union4. This was
genuine not just of such European nations as the United Kingdom, the
Scandinavian nations and Greece, additionally of the United States and parts of
Canada, Latin America (excluding Cuba), and the Asian countries, for
example, India, Japan, Korea and so many more., and also Australia.

While initially the WIPO endeavours were centred around creating a correlation
with the CTM regulation, in the recent piece of the 1980s the emphasis was on
both of the deficiencies of the old Madrid system, the thought around then being
to make two conventions to the Madrid Agreement, one for the connection with
the CTM framework, the other for the augmentation of the participation.

The Madrid Protocol was received on 27 June 1989 and went into power on 1
December 1995 keeping in mind the end goal to manage the weaknesses of that
of the Madrid Agreement. The Protocol got to be agent four months after the
fact, on 1 April 1996, that day that the CTM framework came into use.

Madrid Protocol provides for International Registration of Trade Marks

and its OBJECTIVES are as follows:3

 It facilitates the obtaining of protection for marks (trademarks and service

marks) and from the date of international registration, the protection of
the mark in each of the designated contracting parties is the same as if the
mark had been the subject of an application for registration filed direct
with the Office of that contracting party.
 As international registration is equivalent to a bundle of national
registrations, the subsequent management of that protection is made much
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https://www.nyulawglobal.org
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easier. As a result of International registration, there is only one

registration to renew, and changes such as a change in ownership or in the
name or address of the holder, or a limitation of the list of goods and
services, can be recorded in the International Register through a single
procedural step.

Basic difference and points of comparison between Madrid Agreement and

Madrid Protocol are the following:

Basis of Difference: Madrid Agreement Madrid Protocol

Basic of International For registering a trademark Under the Protocol, the

applicant

Registration internationally under that of May base its application for

the Madrid Agreement, one is international registration on
required to first obtain an application filed with the
registration in his home country's trademark
Home country. office or a registration granted
by that office.
Filing Language Under the Agreement the In case of the Protocol,
working language is French. applications can be filed in
All applications shall be filed English, French or
in French only Spanish
Remedy to Central Under the Madrid Agreement However, under the Protocol.
Attack "central attack" may occur When an international
during registration is cancelled
the first five years of an during its first five years
international registration as due to failure of the basic
follows: application or basic
Where the basic application or registration, the international
basic registration has its scope registration may be
of protection limited or transformed into national (or
eliminated during that time, Regional) applications in each
under the Agreement the of the Contracting Parties in
international extension which the international
registration were similarly registration had effect
limited or eliminated and maintaining the priority date
there was no recourse for the of the international
owner Of the international registration.
registration. The Madrid This possibility does not exist
Agreement’s “central attack” under the Madrid Agreement
provisions are considered
unfair by many trademark
owners Because many of the
grounds available to reject
oppose or move to cancel a
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domestic registration are not

recognized in other countries.
Time limit for refusal The time period for a This time span for refusal was
period contracting country to refuse increased to 18 months in that
the protection is 12 months of the Madrid Protocol.
under the Agreement. This is
considered unfair as the
expenses and process of
registration is very lengthy.
Validity Protection under the Protection under the Protocol
Agreement lasts for 20 years lasts for 10 years before being
before being renewed. renewed.

The international application is subject to the payment of the following

fees:

1. A basic fee;
2. A complementary fee in respect of each designated Contracting Party for
which no individual fee is payable;
3. A supplementary fee in respect of each class of goods and services
beyond the third; no supplementary fee is payable however where all the
designations are ones in respect of which an individual fee has to be paid.
The Nice Classification is based on a multilateral treaty administered by
WIPO. This treaty, consummated on 15 June 1957 in Nice, France, is
called the "Nice Agreement Concerning the International Classification
of Goods and Services for the Purposes of the Registration of Marks".
This Classification is commonly referred to as the "Nice Classification".
The Nice Agreement is open to states who are parties to the "Paris
Convention for the Protection of Industrial Property"

MADRID PROTOCOL: REGISTRATION REQUIREMENTS AND

PROCEDURES:-4

Administration and countries covered under this protocol: The

Madrid Protocol is directed by the International Bureau of the World
Intellectual Property Organization (WIPO) situated in Geneva,
Switzerland. The International Bureau regulates the Madrid System and
directs the transmittal of solicitations for security to all parties to the

4
PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF
MARKS, http://www.tpe.gov.tr/TurkPatentEnstitusu/resources/temp/DF8F37DC-6F934254-B649-
F52D0B23B7F0.pdf (last accessed on 3rd February 2015)
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protocol. Till February 2013, 88 nations have become a member to the

Madrid Protocol. These nations are called "Contracting Parties."
Who may apply for an International Trademark Registration? A
Madrid application can be recorded by a natural individual, or legal
entity, having genuine and successful modern or business foundation
status, or being a domicile/resident of a Madrid Union Member Country.
The Madrid Protocol permits candidates to pick the careful nations in
which they look for assurance.
Where can an international trademark registration are filed? An
International Registration application is recorded at the Bureau through
the workplace of source of the essential national application or
enlistment. It can't be documented straightforwardly at the Bureau. The
Office of Origin in the nation of beginning looks at whether the
worldwide application compares to a compulsory fundamental
application or essential enlistment and conforms to home state necessities
at first. The application ought to be gotten by the International Bureau
from the Office of Origin Article 3 (4) of the Protocol inside of two
months of that starting date of receipt of the application by the Office of
Origin.
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 considered as a ground for
applying for an international registration.
What can be registered? The system enables the registration of
trademarks in many jurisdictions worldwide that are part of Madrid
Union’s 85 member nations by submitting a single application in the
Applicant’s home country trademark office, or regional trademark office.
Language to be used: An international application may be filed in
English, French or Spanish.
Examination procedure by the office of the contracting party: Once
an International Registration has issued, the Bureau will advise the
trademark office of every contracting nations of the solicitation for an
expansion of assurance to that nation/jurisdiction. It will then be analysed
by applicable national law. The national trademark office will concede
security of the marks in that nation/jurisdiction if the application meets
the nearby enlistment or registration necessities.
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The Protocol does not change regional laws on the securing of trademark
rights, application customs and utilization prerequisites. Examination of
national assignments by national trademark workplaces stays subject to
local practice and procedure. The trademark office of every contracting
gathering is qualified for reject security in entire or partially. When a
refusal notification has issued from the national trademark office, by and
large the candidate is told either by the Bureau or through the candidate's
operators, who has gotten the notification from the Bureau.
Refusal of Protection based on Oppositions: Article 5 (2) (c) of the
Madrid Protocol expresses that such refusal by the National Office of
assigned nation in light of resistances can be made post the expiry of the
18 month time limit from warning receipt. A temporary refusal if
proclaimed by a part state is recorded in the International Register by the
International Bureau, and further distributed in the International Gazette,
alongside the transmission of a duplicate to the holder of the worldwide
registration.
Term of Registration: After following the above procedures, a statement
is sent to the International Bureau indicating that the 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. 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.

CHALLENGING INTERNATIONAL REGISTRATION:-5

The rights allowed by an International Registration can be smothered if:

a) Its home application does not develop to registration or

b) Its home enlistment is wiped out amid its initial five years (this idea is
ordinarily alluded to as "central attack"), which is a particular burden.

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In spite of the fact that it would at present be conceivable to change the

International Registration to national applications in the assigned contracting
gatherings if the home application/enrolment is effectively tested, the aggregate
expense would really be higher than if the national course had been utilized at
the start. What's more, the changed national application may must be
reconsidered once more by the national office, despite the fact that practice on
this point may fluctuate.

Dependency and Central Attack Principles:-

The International Application and resulting International Registration are

dependent upon the basic application or registration until the fifth anniversary
of the International Registration date. If anything changes the basic application
or registration during the five-year dependency period, then the same
modifications affect the International Application or Registration. If such
change occurs, the trademark office in the country of origin will notify WIPO,
and the change will be incorporated in the International Application or
Registration and all related Requests for Extension of Protection.

Sometimes the change may be severe, such as the termination or cancellation of

the basic application or registration. If either of these “dies,” then the
International Application or Registration and related Requests for Extension of
Protection die too.

This presents a unique opportunity for parties to challenge the owner’s

registrations. By successfully attacking the basic application or registration
before the fifth anniversary of the International Registration date (a strategy
referred to as a central attack), a party simultaneously and automatically cancels
the entire International Application or Registration.

Strategy Considerations:-

The dependency period and potential for central attack lead many owners to
question whether the Madrid Protocol is preferable to other methods of
trademark registration. Indeed, the decision to use the Madrid Protocol requires
consideration of complex legal and business issues and strategies. In order to
use the Madrid Agreement, the trademark owner’s country of origin must be a
member of the Madrid Agreement, and the country in which protection is
sought also must be a member. To use the Madrid Protocol, similar
membership rules apply. The Community Trademark, however, can be utilized
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by owners who are not EU members, but it is not an option if protection is

desired in a country outside of the EU. For e.g. if US is not a member of the
Madrid Agreement, most US companies cannot seek protection using the
Madrid Agreement (unless they have a qualified foreign office). Furthermore,
although the US is a member of the Madrid Protocol, a US company cannot use
it to seek protection in Canada, for example, because Canada is not a Protocol
member country.

Replacement of already existing trademark: The Madrid Protocol

procurement expresses that an officially existing trademark inside of any local
domain to which Madrid framework wins, and then the Madrid Registration will
supplant the national enlistment. This procurement is equipped for making
perplexity and hurting the enthusiasm of that of the previous right holder and
they are cared for by that of the focal organization.

Transferability Issues:-6

In order to assume ownership of an existing International Registration (or part

thereof) that is governed by the Madrid Protocol or Madrid Agreement, one’s
country of origin must be a member of the Madrid Protocol or Madrid
Agreement. This restriction affects the transferability of trademarks, thus
consideration should be given to whether the owner’s trademarks may be
transferred in the future.

The potential problem is illustrated by the following example:

A US company is under a license agreement for a biologic therapy with a

Canadian company, and the US Company owns the trademark for that therapy.
The US Company obtains a US registration for the trademark and then wants to
seek foreign protection. The US Company can obtain protection in certain
foreign countries by obtaining an International Registration through the Madrid
Protocol, but the US Company must file a national Canadian trademark
application to obtain protection in Canada (because Canada is not a Madrid
Protocol member). Furthermore, if the partnership changes so that the Canadian
company wants to assume ownership of the trademark, the US and Canadian
registrations can be assigned to the Canadian company, but the International
Registration cannot (because Canada is not a member of the Madrid Protocol).

6
Ladas & Parry, Madrid Protocol- General Discussion, http://ladas.com/madrid-protocol-general-discussion/
(Last updated on 5th February 2018)
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Trademark Permanence:-

When contemplating using the Madrid Agreement or the Madrid Protocol, one
should consider the length of time the mark will be used, the potential for
changes to the mark, the likelihood of ownership information changes, and how
the mark will be used in other countries. By filing for protection using the
Madrid Protocol and Agreement systems, the trademark owner typically enjoys
some up-front cost savings in contrast to national filings (with the amount saved
increasing with the number of countries in which protection is sought).
However, the most significant cost savings will arrive ten years later — when
the trademark owner renews the International Registration instead of renewing
registrations in individual countries. Therefore, substantial cost savings may be
realized only if the trademark owner is going to be interested in the trademark
for more than ten years.

Similarly, the Madrid Protocol and Agreement systems provide cost-effective

ways to update changes to ownership information (through WIPO rather than
having to record the update with each country). Accordingly, if the trademark
owner is likely to be moving, changing its name, or transferring ownership of its
trademarks, then the Madrid Protocol or Agreement systems may be preferable
to national filings (unless transfers are likely to be made to companies in
countries that are not members of the Madrid Protocol or the Agreement).

Trademark owners should also consider whether they are likely to make any
alterations to the trademark and whether it will be used identically in foreign
countries. While many countries permit owners to amend a registered
trademark if the change is not material, trademark owners are not allowed to
make any amendments (no matter how minor) to their trademarks under the
Madrid Protocol and Agreement. Consequently, if the trademark owner expects
that the trademark may change slightly over time, national filings may be
preferable.

In addition, national filings may be preferable if the trademark will appear

differently in some countries. For example, some companies may present their
trademarks in English in the US while presenting the marks in Katakana in
Japan. Such differences in the appearance of a trademark cannot be incorporated
in a single International Application.

Narrowing Rights and Ownership Issues: Again on account of proprietorship

we can see that vulnerability of the International Registration on the
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fundamental imprint for a long time from the date of the International
Registration is autonomous of any progressions of possession. Given this, any
documentation concerning a change of responsibility for fundamental mark
inside of this five year period must embody suitable guarantees from the new
proprietor so that the activity or inaction of the new proprietor does not hazard
the International Registration.

There is no time breaking point to apply for a worldwide application once a

national application/enrolment is pending or allowed. The worldwide
application relies on upon a compulsory essential national application or
enlistment the length of it is pending and substantial. On the off chance that
either fall flat before the worldwide enlistment is allowed or inside of 5 years of
the global enrolment being in all actuality, the universal application/enlistment
will likewise get to be invalid. There is no particular procurement clarifying the
system for managing resistances or answers between the Indian registry and the
worldwide candidate as to a universal application documented abroad and
advised to India by the International Bureau for enrolment. Indian Trademark
Rules additionally determine that a candidate ought to have a location for
administration in India which will apply to International candidates once the
Madrid Protocol is successfully actualized through the warning of the
Amendment Act, 2010. Nothing in the correction demonstration determines
resistance procedures in worldwide Madrid applications where India is an
assigned nation. The Amendment demonstration expands the period for
notification of restriction to 4 months. India will need to correct the trademark
enlistment strategy rules for a smooth move into a Madrid framework technique
and post alteration enrolment process.

India: Madrid Protocol In India: Pros and Cons:-

The Madrid system enables the registration of trademarks in multiple

jurisdictions worldwide that are part of Madrid Union's member countries by
filing a single application in the Applicant's national trademark office or
regional trademark office. India was not a member of the Madrid system earlier.
But soon it realized its advantages and decided to become one of its signatories.
India joined the Madrid protocol with effect from July 8, 2013. Applications
using the Madrid system can now be filed from India.

When India became a member of the Madrid protocol, certain amendments had
to be made to the Indian Trademarks Law to comply with the Madrid system.
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The Trade Marks (Amendment) Act, 2010 was passed on 21st September 2010
to bring into force the Madrid Protocol in India. The amendment led to the
inclusion of Chapter IVA (containing sections 36A to 36G) in the Trademarks
Act 1999. This chapter specifically focuses on the "Special Provisions relating
to Protection of Trademarks through international registration under the Madrid
Protocol." The Madrid system has not only eased the procedure of applying for
the trademark but also simplified its subsequent management. Now applicants
can designate India and get trademark protection or get "international
registration" in India based on a 'basic application' or 'basic registration' in a
Protocol member country.

Provisions for International Registration under the Trademark Act, 1999:-7

Pursuant to the Protocol, India has taken significant steps towards the alignment
of its intellectual property regime with the global norms through the Trade Mark
(Amendment) Bill, 2009 which has led to the inclusion of a new chapter
(Chapter IV A) in the Trade Marks Act which exclusively deals with procedural
and statutory requirements for international registration of marks.

Sections 36A to 36G of the Trade Marks Act entail the provisions with respect
to international registration of marks under the Madrid System. Under this
provision, on receipt of notification from International Bureau with respect to a
particular mark, the Registry will examine the mark under the provisions laid
down under Sections 9, 21, 63 and 74 of the Act and thereafter accordingly
issue necessary directives (advertise or refuse) the application and apprise the
International Bureau with respect to the same within 18 months from the date
on which it received the notification.

Advantages: Madrid protocol in India

1. It has a centralized trade mark application process by which a person can

get protection worldwide through a single application and a single set of
fees.
2. It is a more convenient and cost effective method.
3. It prevents the multiplicity of applications.
4. The Protocol Applications may be in French, English or Spanish (which
is obviously an advantage in non-French speaking jurisdictions like India.
5. The process is less time consuming.

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6. Any change in the details of the right holder (Eg. name, address etc.) can
be changed by sending one single document to the International bureau
and no efforts have to be made at every national office.
7. Under the Madrid Protocol, it is pretty easy to add and subsequently
designate the member country at a later date under the same International
registration. The filing and maintenance fees associated with the
international registration are lower over time than maintaining several
separate national registrations.

Disadvantages: Madrid Protocol in India:-

The international registration can extend only to Protocol territories.

1. The Indian Trademarks registry has not been able to entertain the national
filings because of the lack of manpower. Now that India has adopted the
Madrid system, it would be even more difficult to look into both National
and International filings at the same time and with same manpower.
2. The Indian Trademarks registry has not been able to entertain the national
filings because of the lack of manpower. Now that India has adopted the
Madrid system, it would be even more difficult to look into both National
and International filings at the same time and with same manpower.
3. Under the protocol, the international applications have to be processed
within 18 months. Because of this, the national filings might get delayed.
4. The international application is dependent on the basic
application/registration, thus, if there is any change in the "basic"
application or registration (like cancellation), these changes shall
automatically apply to the international applications as well.
5. Assigning the ownership of an International registration to entities
residing or having a connection with Non- Madrid Protocol state is
prohibited under the rules of the Madrid Protocol. This is not good for
India because it has business interests with several non-member countries
and now it will have to file national applications to deal with these
countries.
6. If an Indian basic mark is cancelled or limited in first five years then the
International mark will similarly be cancelled or limited. After the expiry
of this five-year term, however, the international registration becomes
independent.
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WIPO’s Notification on India’s Accession to the Madrid Protocol:-8

 In accordance with Article 5(2) (b) and (c) of the Protocol, this
Contracting Party has declared that the time limit to notify a refusal of
protection shall be 18 months and that, where a refusal of protection
results from an opposition to the granting of protection, such refusal may
be notified after the expiry of the 18-month time limit.
 In accordance with Article 8(7)(a) of the Protocol, this Contracting Party
has declared that, in connection with each request for territorial extension
to it of the protection of an international registration and the renewal of
any such international registration, it wants to receive an individual fee,
instead of a share in the revenue produced by the supplementary and
complementary fee.
 In accordance with Article 14(5) of the Protocol, this Contracting Party
has declared that the protection resulting from any international
registration affected under this Protocol before the date of entry into force
of this Protocol with respect to it cannot be extended to it.

CONCLUSION:

The Protocol endeavours to strike a harmony between the need to regard a

nation's trademark examination framework, a part of State Sovereignty, and the
need to make an effective structure for universal trademark registration. It is
obvious from the above breakdown that the Protocol does not influence any
adjustment in the utilitarian procurements of the law inside of a nation.13 In the
meantime, despite the fact that securing global trademark, insurance under the
Madrid Protocol has numerous prizes; it is not an universal remedy. Every
business element must measure the upsides and downsides of documenting their
marks under the Madrid Protocol in every condition and every nation, before
continuing. The Protocol gives a framework to a financially savvy technique for
acquiring trademark assurance in numerous businesses around the globe,
upgrading the capacity of the endeavours in India to work together abroad in
specific domains. While considering the financial development accomplished
by India in the most recent couple of years and enthusiasm among the outside
speculators, the increase of the Madrid Protocol is one of the most ideal
approaches to advance the worldwide exchange. Understanding the framework
and its constraints, and the numerous accessible alternatives, on the other hand,
is pivotal to building up the best system for the universal registration of marks.
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Webliograpghy

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 https://www.wipo.int
 https://www.karnikaseth.com
 www.tpe.gov.tr