This article provides an overview of the 'Madrid System for International Registration of Marks' which allows individuals and corporate houses to register and protect their marks in a number of countries.

 The Madrid System of International Registration of Trademarks came into existence in the year 1891. It has been a slow process however, more and more countries are becoming part of the Madrid System in order to protect the trademark rights of their individuals, corporate houses and big and small business establishments in foreign countries.

Presently, there are 82 members of the Madrid System, 75 designated countries from the Madrid Protocol and 7 designated countries from the Madrid Agreement. The Madrid System allows protection of a trademark in any number of countries, designated by the Madrid System, by filing a single trademark application, prescribed by the WIPO, with the Regional Trademarks Office in the country of origin of the applicant. However, the fees to be paid at the time of filing may vary depending upon the countries the applicant has decided to include in their application. The applicant has a choice to file the application in three languages i.e. English, Spanish and French. A basic International Application covers up to three classes of goods and services.

It is important to note that an International Application under the Madrid System can only be filed on the basis of an application/registration of the mark to be applied in the home country. For example, in case an applicant wishes to file an International Application and if he/she does not have a registration or application for the subject mark in the home country, then the alternative is to file an application for the subject mark first in the home country and then file the International Application. However, the applicant's name, classes and goods are required to be exactly as applied in the home country. Although the description of goods can be narrower, the International Application will not be accepted in case the description of goods is broader than applied in the home application/registration.

In the first five years from the date of filing, the fate of an International Application/registration is dependent on its home application/registration. In case the International Application is accepted and registered in the designated countries it was applied for, and if the home application/registration, on the basis of which the subject application was filed is refused, abandoned, cancelled or lapses, the International Application will suffer the same fate. However, any effect/decision given on the home application/registration after the fifth year of filing the International Application will have no effect on the International Registration at all.

As indicated herein above, the International Application is required to be filed with the respective Regional Trademark Authority, who after checking the basic requirements will forward the same to the International Bureau (WIPO). The WIPO will issue a registration certificate for the mark applied for. However, the application will then be forwarded to the respective designated countries, where the application will be further examined, published and if accepted, confirmation will be issued. In case the application is held up due to any office actions or opposition, then the applicant will need to request help from the local Attorney in that particular country to clear the matter. The entire process is required to be sorted out within a period of 12-18 months. The initial validity of an International Registration is 10 years.

In case the International Application is rejected in any country, then the applicant can file a fresh national application in that particular country within 3 months of cancellation of the International Application in order to retain its priority.

It is also possible to file an International Application on the basis of a CTM application/registration. However, the International Application has to be exactly as per the CTM application/registration and will be dependent on it for the first five years. In case an applicant from a non- designated country wishes to file an International Application, they will be required to establish an office in any one of the designated countries from where they can file a national and then an International Application. However, it is important that the applicant does an effective amount of business in the country from where he has filed an International Application.

From the point of view of an applicant from a designated country, the Madrid System is beneficial since it is cost effective as he/she will only be required to pay the filing fee for the designated countries covered under their application and that too in their local currency. Moreover, the time frame for issuance of an International Registration is restricted to 18 months, which may reduce the anxiety of the applicant who has had the experience of waiting for years and years for obtaining trademark registrations in a country. Since a single registration can cover a bulk of countries, the registrant will not be required to maintain separate records for renewal as the renewal of an International Registration would mean automatic renewal of the mark in all the designated countries covered under the registration.


Keep yourself acquainted with the latest in IP news. Subscribe to our free newsletter to get regular updates.

Copyright © 2022 R. K. Dewan & Co.