The Madrid Protocol has simplified the process of filing trademark applications across the world by bringing it all under the World Intellectual Property Organization (WIPO). Once a trademark application has been filed in the home country or what is generally referred to as the origin country, one can designate other countries that are a part of the Madrid Protocol using the registration of the origin country as their earliest date of priority. Currently, 92 countries are a part of the Madrid System and so if one applies for a trademark in the origin country which is a part of this System, that individual or entity has the option of using that application as the basis of applying to the other 91 countries listed on the Madrid Protocol. Additionally, trademarks that have been registered can also be designated to other countries.

Some of the advantages of filing applications under this System are – there will be only one date of renewal for all the marks; recordals pertaining to assignments, mergers or any other amendments to the application will be through the International Bureau; the official filing fees will be considerably lesser making the process cost-effective.

There are two possible scenarios – one where India is the designated country and the other where India is the origin country, the latter implying that the trademark application or registration is of Indian origin.

Subsequent Designation

As mentioned earlier, on filing an application for registration or even after obtaining registration, the option of filing an application in another country using the origin country’s filing details is the highlight of this System. This act of further designating countries is called as ‘subsequent designation’.

It is pertinent to note that India can be designated in cases only when the mark has been filed after India became a contracting party to the Madrid Protocol. Therefore, if Z filed an application under the Madrid System prior to July 8, 2013, then Z wouldn’t be allowed to designate India. The same rule doesn’t apply to trademark applications or registrations of Indian origin, meaning that one can designate countries under the Madrid System even if the application or registration in India was prior to July 8, 2013.

Dependency period of 5 years

This is one of the very crucial points for anyone who is considering filing an application under the Madrid System. There is a dependency period for 5 years over the origin country’s application or registration, as the case may be. This means that in the period of 5 years, if there is a cancellation or opposition or objection and it hasn’t been overcome, then all the other designations routed through that trademark will no longer be protected. This is called as the ‘Central Attack’, where the office actions of the origin office affect the Madrid application and designations at large.

Designation of series marks

A series mark, as the name suggests consists of several trademarks which may have similar goods or services but are per se different from each other. For example, Samsung Galaxy has a number of products like Galaxy Note, Galaxy Grand, Galaxy Duos etc. These marks can (or may be have been) be registered as series marks. In India, an applicant cannot protect series marks under one designation, which in my opinion is a disadvantage In case of series marks, there have to be specific designations for every trademark by way of a separate application. This process makes it rather cumbersome and is definitely not cost-effective.

Proceedings – General Practice

Owing to the backlogs in the Trademark Registry, the process of obtaining a registration in India is a rather long one. Going by the general practice, one is likely to encounter objections and oppositions in the process of registering the trademark. This would work against persons making applications with India as their origin country because the likelihood of the mark being opposed or objected or stalled due to the delays and backlogs in the Trademark Registry is very high. Any person or entity using India as their origin country takes the risk of the process being stalled during and even after the dependency period of five years.

The Madrid protocol was brought to life with the sole purpose of enabling easy, cost-effective and hassle-free registration across a number of countries, however, Applicants in India should consider factors like the general practice and timeline of Trademark Registry. More importantly because the monetary losses incurred on designating a number of countries and engaging foreign counsels, if necessary would probably exceed filing separate applications in each of those countries.

This article has been authored by Nikita, an IP Law practitioner.

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