Trademarks are a key component of any successful business marketing strategy, as they allow you to identify, promote and license your products or services in the marketplace and distinguish them from those of your competitors, thereby building customer loyalty. A trademark symbolizes the promise of a quality product and in today’s global and increasingly electronic marketplace, a trademark is often the only way customers identify a company’s products and services. Trademark protection prevents “free ride” moves in the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. The loss, dilution, or infringement of a high-value trademark could be devastating to a business.
The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations (UN) that oversees the task of international registration of trademarks through the Madrid System.
Although it is not possible to obtain an ‘international trademark’, so a single trademark registration will automatically apply worldwide, the Madrid system allows for the filing, registration and maintenance of trademark rights in more than one jurisdiction. Worldwide.
Background-
The Madrid system is administered by the International Office of the World Intellectual Property Organization in Geneva, Switzerland. The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks, which was concluded in 1891 and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which entered into force on April 1, 1996. The Madrid Agreement and the Protocol of Madrid, conferences held in Madrid, Spain were adopted at the diplomatic level.
Recent developments-
There are many significant recent developments in the Madrid Vis a Vis Law trademark system. The accession of the United States and the European Union to the Madrid Protocol on November 2, 2003 and October 1, 2004, respectively, is considered an important advance.
In 2006, WIPO received a record 36,471 international trademark applications under the Madrid system. This represents an increase of 8.6% over the 2005 figures.
No. Developing countries saw significant growth in international trademark filings in 2006. China is the preferred designation for international protection due to its ever-growing economy and business prospects.
WIPO also promotes the use of electronic communication for the processing of international applications. In April 2006, WIPO introduced a new online international trademark renewal service that allows users to maintain their trademark rights quickly and efficiently; about 22% of renewals are registered electronically.
Several new enhancements, including new search functions, were also introduced to the ROMARIN database, which contains information on all international trademarks currently in force in the international trademark registry. As of January 1, 2007, the ROMARIN database is available free of charge on the WIPO website.
indian perspective-
India is also considering and indeed is leaning towards accession to the Madrid system. India is beginning to realize the various advantages of accessing the Madrid System, in particular that an applicant for an international registration has to file a single application, pay a fee in local currency and is not required, at least initially, to present powers of attorney. foreign. Renewals, registrars of assignments, changes of name and/or address of an international registration may be affected by the presentation of a document at the International Bureau. Additionally, paying a single filing fee and preparing a single application should result in savings on legal services fees.
India has said that it would join the Madrid System after making due preparations, including upgrading its trademark offices. Investment and action in this direction should be accelerated and Indian providers of goods and services allowed to take advantage of the system without further delay. It is also necessary to note that the Madrid System does not prevent trademark holders from routing their application through the IP offices of member countries other than their own. If India does not soon accede to the system, Indian companies may be forced to file their international applications from third-country IP offices by establishing prescribed minimum operations for this purpose.
However, considering the Indian scenario, there are few major concerns and apprehensions that arise that need to be addressed and resolved before India joins the Madrid System.
Some of the main concerns that arise in this regard are summarized below:
“It is feared that Protocol applications will create a further backlog in many already overburdened Trademark Offices, where it currently takes more than one or two years to review and process applications.
“Trademark offices in India may also require additional staff, IT infrastructure and IT-trained staff, which will increase domestic filing costs.
“While companies will benefit from the settlement, the government and local trademark lawyers stand to lose as it would significantly reduce local filings.”
“Trademark law and practice in jurisdictions such as India, Brazil, Canada, Japan and Hong Kong may disadvantage those who base their international registration on a basic or originating application, especially as these jurisdictions have lengthy opposition procedures and a successful opposition to the basic or origin application, then it would be necessary to file national applications, which would generate additional costs.”
“The increased number of initial applications may prompt designated country mark examiners to issue a provisional refusal for all available reasons, if only to avoid automatic registration.”
“Trademark offices will need to develop a system to distinguish international registrations from national registrations. This will result in increased record keeping, which will require more staff and man hours and computerized databases which do not yet exist in India, Pakistan, Sri Lanka and various other jurisdictions”.
“With more trademarks registered, there could be decreasing availability of trademarks to small entities for home use only.”
“An international application and any future communications related to it may be in English or French. The result of the bilingual system requires the employment of additional multilingual staff in the national trademark offices. India is inclined to adhere to the Madrid Protocol.”
At this point, it is pertinent to note that, since the Madrid system offers the possibility of filing an application for international registration in the trademark office of any country in which the applicant has a substantial commercial interest or is domiciled, and not necessarily in their own country’s trade mark office, failure to join the system encourages Indian companies to use the mark offices of other countries that are members of the system. To counter this trend, India is seriously considering its accession to the Madrid Union and is strengthening its own trademark registry and professional skills ahead of such accession. The recent accession of the United States and China has also added a new dimension to the Madrid System.
India is aware of the many benefits offered by the Madrid System and is currently contemplating joining the Madrid System. India is planning viable strategies to find solutions to address all the apprehensions you speculate in this regard! It is already in the process of updating its official website and making it possible for trademark searches to take place online. In addition, it is working to make available online trademark magazines and registries of already registered trademarks and the ability to check the status of pending applications online. have a complete computerization of the records in addition to making substantial expansions in its main infrastructure facilities.
Conclusion-
The Indian point of view Vis a Vis Accession to the Madrid System can be summarized in a few words as follows:
The Madrid System is definitely the best system currently available for obtaining the international registration of trademarks, as it simplifies the filing of trademark applications and the related procedural steps to some extent, and can reduce costs. Therefore, it seems that the Protocol is worth accessing! However, before India decides to do so, certain major changes to India’s current trademark registration regime are warranted, which India is already in the process of adopting. Therefore, there is a high probability that India will soon join the Madrid System of International Registration of Marks.
