The international registration and management of trademarks is facilitated by the Madrid Agreement or the Madrid Protocol which is administered by the World Intellectual Property Organization (WIPO) and presently, 99 countries from across the world have joined the Madrid Protocol.

The Madrid Protocol Trademark Registration Process and Stages:

  • Basic application-
    A pending application or a registration with the Indian Trademark Office is a pre-requisite for filing an application under the Madrid Protocol in India. The Indian Trademark Office will then certify that the information in the international application such as the mark, goods & services, color claim, etc. are as the same as that in the basic application/registration, the date on which the international application was filed and forward the application to WIPO.
  • Examination by WIPO-
    After filing the international application, WIPO conducts a formal examination to check if the application complies with the statutory requirements. In case of any irregularities the same are notified to the applicant, and the same needs to be remedied within three months failing which the application will be treated as abandoned.
  • Publication by WIPO-
    Post examination, if no irregularities are found or if the same have been remedied within the statutory deadline, the application is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send the applicant a certificate of International Registration and will notify the other trademark offices in the countries that the applicant has chosen to extend the protection of the mark.
  • Subsequent Examination by the Trade Mark Office of the Designated Country-
    The application passes through substantial examination at the trademark office of the contracting party (designating country) exactly the same way as a directly filed national application. The acceptance or refusal of the application by the designating country is notified to WIPO within the applicable time limit (12 or 18 months). WIPO will then record the same in their records and notify the applicant about the decision of the trademark office of the designating country.Once an international application designating India is notified to the Indian Trade Marks Office, there is a time-limit of 18 months for the Trade Marks Office to issue an examination report (provisional refusal) if it deems fit. If a provisional refusal is notified by the Indian Trade Marks Office to WIPO, the same will be reviewed and notified to the applicant, who must file a formal response within one month of the date of receipt of such provisional refusal notification. Detailed information on filing response to provisional refusal can be found on our blog post here.
  • Advertisement and Registration-
    Post filing of the response to the provisional refusal, the same will be reviewed by the Indian Trade Marks Office in a span of couple of months. The mark will subsequently be advertised in the Indian Trade Marks Journal and open to third-party opposition for a period of 4 months. On expiry of the 4-month opposition period and in absence of any opposition, the mark shall be granted protection by the Indian Trade Marks Registry and the registration will be valid for a period of 10 years.In case no provisional refusal is notified to WIPO within 18 months the mark shall ordinarily proceed towards advertisement and follow the usual procedure as detailed above.
  • Renewal-
    Renewal application with respect of the Madrid application designating India needs to be made only at WIPO and the shall be notified to the Indian Trademark Office by WIPO. It is pertinent to note that any change of applicant/ownership information, limiting goods and services, renewal of the registration, assignment etc. can be made by just filing a single application at WIPO and the same will be reflected to all the designating countries.

To read more on Madrid Protocol and concepts pertaining to International Applications please do read our blog post here and here.