What is madrid protocol?

The Madrid Protocol is a system that enables the registration of trademarks worldwide using a single application. This application can include multiple nations, providing significant advantages for portfolio management and cost savings.

Instead of submitting separate applications for each country, businesses can streamline the trademark registration process by utilizing the Madrid Protocol. This system simplifies the procedure and allows for efficient international trademark protection.

The amazing Madrid Protocol came into existence in 1996 with one awesome mission:

To help you register your trademark in several countries. Now, let's get into Madrid agreement, which explains the nifty international trademark registration system. All you need to do is submit an application for International Trademark Registration to your trademark office. To register a trademark under the Madrid Protocol, the first step is to apply with the trademark office, which is usually the office of origin. For instance, if you're doing business in India, your place of origin would be the Office of the Registrar of Trademarks in India. Once you submit your application, they will process it and proceed to register your trademark with the Intellectual Property Organization in Geneva.

If your trademark application meets all the required standards, it can be officially registered and published in the World Intellectual Property Organization (WIPO) Gazette of International Marks. This means that your mark, logo, or word will be recognized internationally and protected under intellectual property laws. Being recorded in the International Register increases the visibility and credibility of your trademark, which can be beneficial for your business.

International trademark registration

To apply for trademark protection in a foreign country, a direct international application must be submitted to that country's trademark office, following its specific legal requirements.

To complete your application, we kindly ask you to provide the following documents:

- If you have a logo, you can include a replica (optional).

- Form 48

- Certificate of registration for Udyog Aadhar

- Certificate of incorporation or partnership deed

- Document proving the identity of the signatory

- Proof of address for the signatory.

The Procedure of Direct Filing

Step 1: Apply to the relevant national trademark office, such as the US office

- Submit Form MM2 (or MM-18E in the US)

- The national office examines the application

- Important for online operators in the e-commerce industry

- Allows products to be sold to consumers abroad

Step 2: WIPO examines the approved application

- Purpose is to verify accuracy and approve for publication in the WIPO's International trademark gazette

Step 3: WIPO's Assessment of Trademark Application

Once your application has obtained approval from the national office, the WIPO will conduct a meticulous analysis. The primary objective of this evaluation is to ensure the absence of any mistakes in your application and subsequently approve and publish it in the WIPO's International trademark gazette.

Step 4: Review of Trademark Application by National Trademark Offices of Each Targeted Country

At this stage, the competent national trademark authorities will meticulously scrutinize your application for any potential errors.

Step 5: National Proceedings

As part of the national proceedings, it is customary to publish the trademark application in the national gazette or bulletin. This serves as an opportunity for other trademark owners to voice any concerns they may have.

Step 6: Provisional Rejection

Within one year, the national office is required to submit a provisional denial notification. In cases where there are complications with pre-registered trademarks, this timeframe may be extended to 18 months or more. Assuming all requirements are met, the trademark will be registered promptly and without any unnecessary delays.

How to File an International Application under the Madrid Protocol?

Step 1: Getting Assistance from an Attorney

If you need help with filing the international application, you can consult an attorney. Just make sure to give them proper authorization using Form TM-48. Also, remember to pay the stamp duty as required by your state.

Step 2: Submitting the Documents

If the foreign country you are applying to is an EU member, you'll need to file a second application using Form MM-18(E). Additionally, if you are applying to the US and your language is not French, German, Italian, or Spanish, you must specify a second language. The international application itself should be completed using the prescribed Form MM-2(E).

Step 3: Verification

Once we receive an international application, our team ensures that it meets all the necessary requirements of the Madrid Protocol before it is forwarded to WIPO. After verifying everything, WIPO then transfers the application to the relevant foreign government.

Step 4: National Registration

For the international registration to remain protected, it relies on the local registration's continuous effectiveness over a span of five years. In case the local registration expires or if the TM application is rejected, withdrawn, or abandoned within that timeframe, the international registration will no longer be safeguarded.

Step 5: WIPO Application

When international applications are sent from the offices of origin, we meticulously inspect them at WIPO. If we spot any irregularities, we usually notify the office of origin within three months. This way, we can address any issues and decide which goods/services will be accepted for protection under the international registration.

What's the difference between filing a trademark internationally in each foreign country and doing it through the Madrid Protocol?

If you choose to file directly in each country, you have the option to register your trademark in multiple places. However, keep in mind that this method involves following different rules and going through various processes depending on each country and territory. You'll also need to pay government filing fees in their respective currencies.

On the other hand, the Madrid Protocol offers a simpler solution. It allows you to file your trademark using a single procedure. Plus, the filing fees for each foreign country can be paid in India and in Swiss Franc (CHF) only.

When it comes to the language, with the direct filing method, you can submit your application in either the domestic language or English. However, with the Madrid Protocol, you have the flexibility to file your application in English, French, or Spanish.

Benefits of Global Trademark Registration

Protecting Your Rights

Global trademark registration provides a legal defense against any infringement on your trademark by others. Having a registered trademark makes it easier to prove your legal rights in court, ensuring a strong defense in case of infringement. So, before taking any legal action against an infringement, it's vital to confirm that your trademark search, be it a word, slogan, or logo, is registered.

Unlocking Business Opportunities

A trademark is not just a symbol; it is an intangible asset that plays a crucial role in building your brand. A well-established trademark can lead to financial prosperity and increased recognition for your company. Just take a look at companies like Nike and McDonald's, which have earned considerable royalties through licensing agreements.

Establishing a Unique Identity

International trademark registration is the initial step towards gaining global recognition for your product. It serves as the foundation for building a unique identity in the market and differentiating yourself from competitors.

Boosting Online Business

For e-commerce operators, international trademark registration is a game-changer. It is an essential tool for the growth and development of your online business, ensuring that your brand is protected across borders.

Remember, by getting your trademark registered globally, you not only safeguard your rights but also open doors to exciting business opportunities, increased visibility, and success in the online realm.

Registration process of International trademarks

Step 1: Application through the National Office of Registered Brands

Previous to send a universal application, verify that you are registered; If not, send a request to the registered trademark of the country and the IP office. The elementary brand application is the name of the initial submission of the application. When the elementary registered trademark application process is completed, you can go to the same office to request a registration investigation of world trademarks, which will be sent to Wipo.

Step 2: WIPO exam

Your application is reviewed by the World Intellectual Property Organization (WIPO). Once accepted, its universal brand is published in the WIPO Gazette of world brands and is added to the World Registry. At that moment, Wipo will notify the IP offices in each domain where it has required that your brand is ensured and sends an authentication of your world registration.

Keep in mind that at this point in the process, there will be no guarantee of a worldwide record. After careful importance and selection of IP offices/brands registered in those domains, it ends up dictating.

Step 3: National offices exam

Once the appropriate time period (12 or 18 months) has passed from its promulgation, the IP offices of the important areas will decide where they should defend their brand. The International Registry will be updated with the selections of the registered trademark offices, and Wipo will inform you.

If an IP office dictates not to affirm its brand completely or partially, this election does not refer to the elections taken by other offices. According to its laws, you can directly play a rejection choice in front of the trademark office in question. If an office accepts the responsibility of ensuring its brand, it will issue an advertisement of the guarantee award. This international trademark is valid for 10 years. After 10 years, you can renew it, if you want it.