INTERNATIONAL TRADEMARK REGISTRATION

Although, it is not possible to register a particular brand as “International Trademark”, the Madrid Protocol system provides an easy solution to the applicant if the country in which they want to register their trademark has signed up the Madrid Protocol. India signed up for Madrid Protocol with WIPO in the year 2013. Madrid System, including Madrid Agreement and Protocol relating to Madrid Agreement, is an international treaty to facilitate international registration of trademarks and management of trademark applications worldwide.

The applicant should be a national of India or domiciled in India or have real and effective business or commercial establishment in India.The applicant must have a national (Indian) trademark application or registration of a trademark with the Indian Trade Marks Registry. This national trademark application/registration will be used as the basis of the international application.The international application will have the same trademark as mentioned in the national trademark application or registration.The list of goods and services mentioned in the international application should also be identical with the national mark.The applicant in the international application must choose one or more other member countries of the Madrid Protocol, where the applicant wants to protect his trademark.

All international applications based on national or regional applications or registrations should be filed using the MM2 International Application form. All International Applications designating the United States of America must also include Form MM18 (Declaration of intention to use the mark).

The application can be filed in any one language out of English, French or Spanish irrespective of the language of contracting party.

The International application under Madrid protocol may be filed based on either a mark that has already been registered in India or which has been applied for registration. It means to file an International application first a local registration of trademark be obtained or applied for. The International application can be filed only in respect of goods or services for which the local registration in respect to a trademark has been obtained or applied.

The International application can be filed for the countries or group of countries which are parties to the Madrid protocol and have further ratified the same. List of countries who are member of the Madrid protocol/ system can be viewed here.

The status of international application filed via Madrid route can be checked using the Madrid Monitor tool. Information relating to international application or subsequent designation is also available through Madrid Monitor. Status updates are available under the Real-time Status tab.

The current status of all international registrations in force is published by WIPO in Madrid Monitor. This database contains the bibliographic data of all international registrations in force and reproductions of marks which consist of or contain special characters or figurative elements. Information is made available free of charge and updated daily. Digitized copies of the following notifications, received by WIPO since January 1, 2005, can also be accessed directly in Madrid Monitor in PDF format:

• Notifications of provisional refusal
• Statements of confirmation of total provisional refusal
• Statements of grant of protection following a provisional refusal
• Statements of grant of protection where no notification of provisional refusal has been communicated
• Statements indicating that the ex officio examination is completed but that a mark’s protection can still be subject to opposition or observations by third parties
• Further decisions
• Invalidation notices
• Digitized copies of all documents received by WIPO for international Registrations where you are the owner or registered representative can be accessed via the Madrid Portfolio Manager.

The international registration of mark is valid for ten (10) years. A renewal reminder letter will be sent by WIPO to the holder and representative of an international registration six months before its expiry. The Madrid e-Renewal Service allows to file a request for the renewal of an international registration, from three months before its expiration date until the end of the six-month grace period following this date.

The request for the recording of a change in ownership of an international registration must be presented to WIPO on the form MM5, either directly by the recorded holder (or the recorded representative, if any), through the Office of the Contracting Party of the recorded holder, or through the Office of the Contracting Party of the new owner (the transferee).

The Office of a designated Contracting Party must communicate its notification of provisional refusal within one year from the date on which it was notified of the international registration or subsequent designation by WIPO. In the absence of a notification of provisional refusal within the applicable time limits, the mark is considered protected in the territory of the designated Contracting Party concerned for all the goods and services for which protection has been requested.

The procedure following the notification of a provisional refusal of protection is determined by the Office of the designated Contracting Party concerned and is carried out directly between the holder and the Office. All the information required to follow up with the Office is in the notification of provisional refusal issued by the Office. This includes the grounds for refusal, time limit for requesting review or appeal, authority to which such request for review or appeal should be made and whether or not the assistance of a local representative is mandatory.