Trademark is a form of Intellectual Property consisting of recognizable sign, design, or expression which identifies products or services of a particular source from those of others. Trademarks are territorial in nature, i.e. they are only valid within the territory of a country or a group of countries having established a regional trade mark system, e.g., India, the European Union, etc. Protecting your brand outside India implies acquiring trade mark rights in each of the export markets where you wish to commercialize your products or services. The Madrid Protocol comes into picture here as it develops a centralised system for international registrations of trademarks. This system of international registration of marks is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement (The Madrid Protocol), which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. The Madrid Protocol is administered by the World Intellectual Property Organisation (WIPO).

          The Madrid Protocol is advantageous for India as most of India’s top trading partners are members of the Madrid Union. The 15 major export countries, having accounted for 60% of Indian exports in 2016, include ten members of the Madrid Union, namely United States of America, China, United Kingdom, Singapore, Germany, Vietnam, Belgium, France, Netherlands and Turkey. Other members of the Madrid Union that also account for significant values of Indian exports include Italy, Japan, Republic of Korea, Mexico, Spain, Thailand, Indonesia, Israel, Australia and Iran. India became a member of the protocol in 2013.

          In India, to apply for an international registration under the Madrid Protocol a few conditions have to be fulfilled. Firstly, the applicant must be a national of India, or a natural person or legal entity domiciled in India, or should be having a real and effective industrial or commercial establishment in India. Secondly, the applicant must have a mark that has already been registered or applied for protection in India at the India Trade Marks Registry.[1]

          The International Application must contain the name and address of the applicant; the reproduction of the mark, which must be identical to the basic mark in India; a list of the goods and services for which protection is sought, which must be fully covered by those indicated in the basic mark; and a list of members of the Madrid Union in which protection for the mark is sought, known as the Designated Contracting Parties and any other information or forms required by individual Designated Contracting Parties. Broadly, there are 4 steps for the international registration under the Madrid Protocol. Firstly, the applicant registers the mark at the office of origin in their own country and pays the fees for the application. Secondly, the office of origin certifies the international application and asks for rectification by the applicant if required and forwards it to WIPO. Thirdly, WIPO does a formal examination of this application and registers the mark in the International Register and publishes the international registration in the Gazette. It issues the certificate and notifies the Designated Contracting Parties. Lastly, the scope of protection of the international registration is determined by substantive examination under their domestic laws within 18 months. Once the Designated Contracting Parties accept the registration, the mark will enjoy the same protection in each of the Designated Contracting Parties as if the mark had been filed or applied for directly in that Designated Contracting Party.[2]

           The procedure under the Madrid Protocol is very simple, user-friendly, expeditious and cost effective, there’s no need to file separate applications in many countries, drafted in different languages, pay fees in different currencies, hire the services of local representatives and follow different procedures in each of those countries. The strict time limits imposed on Madrid Union members to decide on the recognition of local rights based on the international registration contribute to speed up protection procedures. Once the international registration has been obtained, we have to take care of only one renewal date and procedure, all in one place (WIPO), instead of many different dates and procedures at separate TM offices. The Madrid Protocol offers an early brand presence abroad, as it is a means to acquire rapid international reputation and generate goodwill for trademarks.

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[1] GUIDELINES FOR FUNCTIONING UNDER THE MADRID PROTOCOL: TRADE MARKS REGISTRY MUMBAI, Available at: http://www.ipindia.nic.in/writereaddata/images/pdf/guidelines-for-functioning-under-the-madrid-protocol.pdf

[2] THE MADRID PROTOCOL: A ROUTE TO GLOBAL BRANDING, Available at: http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PROTOCOL.pdf